[Federal Register Volume 85, Number 147 (Thursday, July 30, 2020)]
[Proposed Rules]
[Pages 45812-45834]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-12210]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 11
[Docket No. PTO-C-2013-0042]
RIN 0651-AC91
Changes to Representation of Others Before the United States
Patent and Trademark Office
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) proposes to amend the Rules of Practice in Patent Cases and the
rules regarding Representation of Others before the United States
Patent and Trademark Office. This rulemaking proposes to align the
USPTO Rules of Professional Conduct more closely with the ABA Model
Rules of Professional Conduct; to improve clarity in existing
regulations to facilitate the public's compliance, including revising
various deadlines, the procedures concerning the registration exam,
provisions related to the revocation of an individual's registration or
limited recognition in limited circumstances, and provisions for
reinstatement; and to make non-substantive changes, increasing the
readability of various provisions.
DATES: Written comments must be received on or before September 28,
2020.
ADDRESSES: Comments should be sent by electronic mail message over the
internet addressed to: [email protected]. Comments may also be
submitted by mail addressed to: Mail Stop OED-AC91, United States
Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-
1450, marked to the attention of William R. Covey, Deputy General
Counsel for Enrollment and Discipline and Director of the Office of
Enrollment and Discipline.
Comments may also be sent via the Federal eRulemaking Portal. Visit
the Federal eRulemaking Portal website (https://www.regulations.gov)
for additional instructions on providing comments via the Federal
eRulemaking Portal. All comments submitted directly to the USPTO or
provided on the Federal eRulemaking Portal should include the docket
number (PTO-C-2013-0042).
Although comments may be submitted by postal mail, the Office
prefers to receive comments by email. The Office prefers comments to be
submitted in plain text but also accepts comments submitted in
searchable ADOBE[supreg] portable document format (``PDF'') or
MICROSOFT WORD[supreg] format. Comments not submitted electronically
should be submitted on paper in a format that accommodates digital
scanning into ADOBE[supreg] PDF.
Comments will be made available for public inspection at the Office
of Enrollment and Discipline, located on the eighth floor of the
Madison West Building, 600 Dulany Street, Alexandria, Virginia.
Comments also will be available for viewing on the Office's internet
website (http://www.uspto.gov) and on the Federal eRulemaking Portal.
Because comments will be made available for public inspection,
information that the submitter does not desire to make public, such as
an address or phone number, should not be included.
FOR FURTHER INFORMATION CONTACT: William R. Covey, Deputy General
Counsel for Enrollment and Discipline and Director of the Office of
Enrollment and Discipline, by telephone at 571-272-4097.
SUPPLEMENTARY INFORMATION:
Purpose
Section 2(b)(2)(D) of title 35 of the United States Code provides
the USPTO with the authority 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.'' Part 11 of title 37 of the Code
of Federal Regulations contains those regulations that govern the
representation of others before the USPTO, including regulations
relating to recognition to practice before the USPTO, investigations
and disciplinary proceedings, and the USPTO Rules of Professional
Conduct. Part 1 of title 37 of the Code of Federal Regulations
addresses the rules of practice in patent cases, and most relevantly
fees in patent matters. This notice sets forth proposed amendments to
parts 1 and 11 as discussed herein.
On April 3, 2013, the Office published a final rule that
established the USPTO Rules of Professional Conduct, 37 CFR 11.101 et
seq. The USPTO Rules of Professional Conduct are modeled after the
American Bar Association (ABA) Model Rules of Professional Conduct. The
USPTO Rules of Professional Conduct have not been substantively updated
since 2013.
Harmonization With the ABA Model Rules of Professional Conduct
Due to the length of time since the USPTO last updated its
regulations, the USPTO proposes to amend the USPTO Rules of
Professional Conduct to align them with widely-adopted revisions to the
ABA Model Rules of Professional Conduct. Section 11.106(b) of title 37
of the Code of Federal Regulations would be amended to allow a
practitioner to reveal information relating to the representation of a
client in certain circumstances for the purpose of detecting and
resolving conflicts of interest arising from the practitioner's change
of employment or changes in the composition or ownership of a law firm.
Section 11.106(d) would be amended to require a practitioner to make
reasonable efforts to prevent the inadvertent or unauthorized
disclosure of, or unauthorized access to, information relating to the
representation of a client. Section 11.118 would be amended to clarify
that a practitioner may not use information learned from a prospective
client except as otherwise provided, regardless of whether the
information was learned in a discussion. Section 11.702 would be
amended to allow practitioners to post contact information such as a
website or email address instead of an office address on marketing
materials. Finally, Sec. 11.703 would be amended to clarify that the
limitations on solicitation apply to any person, without regard to
whether the practitioner considers the targets of the solicitation to
actually be prospective clients.
Simplification and Clarification of Rules and Processes
The USPTO also proposes to amend its regulations to facilitate
compliance by the public. As discussed in greater detail in the section
``Discussion of Specific Changes in this Proposed Rule,'' amendments
are proposed to Sec. Sec. 11.7, 11.9, 11.11, 11.51, 11.52, 11.53,
11.54, 11.55, 11.58, and 11.60 to enhance generally the clarity of
these sections. Also, the reinstatement provisions in Sec. Sec.
11.9(f) and 11.11(f) would be aligned for all registered practitioners
and practitioners granted limited recognition under Sec. 11.9(b). The
periods of time in these sections would be either the same as or
greater than the applicable periods previously provided under this
part. As such, the new time
[[Page 45813]]
periods would apply without regard to whether the relevant period began
to run before or after the effective date of the final rule for this
action.
In addition, the regulations would be amended to add provisions
addressing the revocation of registration or limited recognition. To
better protect the public, the USPTO proposes to create a process in
Sec. 11.11(g) by which an individual's registration or limited
recognition may be revoked in limited circumstances. For example, if an
applicant were to be granted status as a registered practitioner but
were to be later discovered to have failed to disclose material
information in his or her application, such as a conviction for a
felony, the Director of the Office of Enrollment and Discipline (OED
Director) would issue to that practitioner a notice to show cause why
the practitioner's registration or recognition should not be revoked,
and the practitioner would be provided an opportunity to respond. This
would parallel the existing provisions in Sec. Sec. 11.7(j), 11.11(b),
11.20(a)(4), and 11.60(e).
Finally, the USPTO proposes changes to improve the registration
examination and application process. Applicants for the registration
examination would be provided the opportunity to avoid having to
reapply entirely by paying a new fee of $115 for an extension of time
in which to schedule and take the examination. This new fee would be
implemented though revisions to Sec. Sec. 1.21(a)(1), 11.7(b), and
11.9(e). This is expected to streamline the process and reduce expense
to applicants while also conserving agency resources.
Other Minor Changes
Minor edits, discussed below, would also be made throughout the
regulations. These include increasing structural parallelism between
similar provisions, including between Sec. Sec. 11.24 and 11.29;
increasing the readability of provisions throughout, including
Sec. Sec. 11.7 and 11.9; and making corrections to spelling, grammar,
and cross-references, harmonizing terminology, correcting syntax
formats to comport with the Federal Register Document Drafting
Handbook, and reorganizing paragraph structure. In sum, these
amendments are aimed at benefitting practitioners by clarifying and
streamlining professional responsibility obligations and procedures.
Discussion of Specific Changes in This Proposed Rule
The USPTO proposes to eliminate the fee in Sec. 1.21(a)(1)(ii)(B)
for taking the registration examination at the USPTO's offices in
Alexandria, Virginia. The USPTO no longer intends to administer the
paper-based examination in its offices. The computer-based examination
will continue to be offered at thousands of testing centers across the
United States.
The USPTO proposes to amend Sec. Sec. 1.21(a)(1), 11.7(b), and
11.9(e) to provide applicants for registration or limited recognition
the ability to request extensions of time to schedule the registration
exam for a fee. Currently, applicants are assigned a window of time in
which to schedule and sit for the registration examination. Applicants
who do not take the examination before the expiration of that window
must reapply and again pay the application and test administration
fees. The ability to request extensions of time will save those
applicants who require more time to prepare for the examination or are
unable to sit for the examination within the window from having to
reapply and again pay the application and test administration fees. The
proposed fee is significantly less than the existing application and
examination fees that would be due from an applicant who failed to take
the registration examination during the test window. The proposed fee
would recover the estimated average cost to the Office of related
processing, services, and materials. The authorization for this fee is
35 U.S.C. 41(d)(2)(A).
The USPTO proposes to amend Sec. 1.21(a)(9) to provide a heading
to clarify the nature of the fees listed thereunder. The proposed
revision makes no change to the fees themselves.
The USPTO proposes to amend Sec. 11.1 to clarify several
definitions and to correct typographical errors. The terms
``conviction'' and ``convicted'' would be revised to correct the
spelling of ``nolo contendere.'' The term ``practitioner'' would be
revised to eliminate surplusage within the definition. The term
``register'' would be added alongside ``roster'' to clarify that both
terms carry the same meaning. The term ``serious crime'' currently
encompasses all felonies. However, not all states classify crimes as
felonies and misdemeanors. To ensure consistent treatment among
similarly situated practitioners, the definition would be revised to
encompass any criminal offense punishable by death or imprisonment of
more than one year. This revision would provide a clear and uniform
rule in harmony with 18 U.S.C. 3559(a). The term ``state'' would be
revised to reflect the correct capitalization of ``commonwealth.''
The USPTO proposes to amend Sec. 11.2(b)(2) to eliminate an
unnecessary reference to Sec. 11.7(b). This revision would result in
no change in practice.
The USPTO proposes to amend Sec. 11.2(b)(4) to clarify that the
OED Director is authorized to conduct investigations of persons subject
to the disciplinary jurisdiction of the Office. The amendments would
also replace the term ``accused practitioner'' with ``subject of the
investigation.''
The USPTO proposes to amend Sec. 11.4, currently reserved, to
define how time shall be computed in part 11. The computational method
aligns with that set forth in the Federal Rules of Civil Procedure.
The USPTO proposes to amend Sec. 11.5(a) by adding a paragraph
heading.
The USPTO proposes to amend Sec. 11.5(b) to change the term
``patent cases'' to ``patent matters''; amend Sec. 11.5(b)(1) to
change the term ``other proceeding'' to ``other patent proceeding'' to
clarify that this subparagraph refers only to patent proceedings; and
clarify the definition of practice before the Office in trademark
matters in Sec. 11.5(b)(2). Section 11.5(b) continues to provide that
nothing in Sec. 11.5 prohibits a practitioner from employing or
retaining a non-practitioner assistant under the supervision of the
practitioner to assist in matters pending before, or contemplated to be
presented to, the Office.
The USPTO proposes to amend Sec. 11.7(b) to eliminate the
requirement for applicants to refile previously submitted documentation
after one year. The provisions regarding retaking the examination would
be moved from subparagraph (b)(1)(ii) to (b)(2). A limitation of five
attempts to pass the examination for registration would be added to
subparagraph (b)(2) to maintain the integrity of the examination. This
would not prevent an applicant from petitioning for subsequent attempts
under Sec. 11.2(c). The provisions regarding denial of admission to
the examination and notices of incompleteness would be moved from
(b)(2) to (b)(3), which is currently reserved.
The USPTO proposes to amend Sec. 11.7(d)(3)(i)(B) to change the
term ``patent cases'' to ``patent matters.''
The USPTO proposes to remove the ultimate sentence of Sec. 11.7(e)
to eliminate conflict with proposed Sec. 11.7(b)(2).
The USPTO proposes to amend Sec. 11.7(g)(1) and (g)(2)(ii) to
clarify that OED may accept a state bar's determination of character
and reputation as opposed to simply
[[Page 45814]]
character. The amendment also corrects an internal citation and updates
a reference to requests for information and evidence in enrollment
matters.
The USPTO proposes to amend Sec. 11.7 by adding a new paragraph
(l) that would clarify that a registered patent agent who becomes an
attorney may be registered as a patent attorney upon paying the
required fee and meeting any additional requirements.
The USPTO proposes to amend Sec. 11.9(a) to improve clarity and
Sec. 11.9(b) to update a cross-reference. The revisions would make no
change in practice.
The USPTO proposes to amend Sec. 11.9 by mirroring where possible
the provisions of Sec. 11.7(a) and (b) in new paragraphs (d) and (e)
of Sec. 11.9. This is intended to improve the readability of the
application process as it applies to those seeking limited recognition
under Sec. 11.9(b), and it would make no change in practice.
The USPTO proposes to amend Sec. 11.9 by adding a new paragraph
(f) to clarify the documentation required to obtain reinstatement of
limited recognition. This proposed revision generally restates the
practice currently set forth in Sec. 11.7(b) and clarifies that
individuals must provide objective evidence that they continue to
possess the necessary legal qualifications if their limited recognition
has been expired for five years or longer at the time of application
for reinstatement. Retaking and passing the registration examination
would be one way to establish such objective evidence.
The USPTO proposes to amend Sec. 11.10(a) to clarify that only
authorized practitioners may represent others before the Office in
patent matters. This clarification is not intended to affect the rules
governing practice before the Patent Trial and Appeal Board in parts 41
and 42 of this chapter.
The USPTO proposes to delete Sec. 11.10(b)(3), (b)(4), (c), (d),
and (e), which addressed terms in 18 U.S.C. 207, a criminal statute. No
change in practice is intended by these deletions, as these provisions
were unnecessary.
The USPTO proposes to amend Sec. 11.11(b) to change the term
``patent cases'' to ``patent matters'', to clarify the nature of the
notice called for in paragraph (b)(1), and improve syntax.
The USPTO proposes to amend Sec. 11.11(b)(3) to clarify that the
OED Director may withdraw a notice to show cause where the practitioner
who is subject to such notice has satisfied the notice's requirements
prior to the USPTO Director making a decision on such notice.
The USPTO proposes to amend Sec. 11.11 by adding a new
subparagraph (b)(7) to clarify that administratively suspended
practitioners must apply for reinstatement under paragraph (f)(1) in
order to be reinstated.
The USPTO proposes to amend Sec. 11.11(c) to simplify the process
for requesting reactivation and to replace the term ``roster'' with the
term ``register''.
The USPTO proposes to amend Sec. 11.11(e)(1) to clarify the
eligibility requirements for practitioners who request to resign. These
revisions would make no substantive change.
The USPTO proposes to amend Sec. 11.11(f)(2) to improve clarity
and harmonize the requirements for reactivation with the requirements
for reinstatement following administrative suspension. Specifically,
individuals who have been administratively inactive for five or more
years subsequent to separation from the Office or cessation of
employment in a judicial capacity will be required to submit objective
evidence that they continue to possess the necessary legal
qualifications. Retaking and passing the registration examination would
be one way to establish such objective evidence.
The USPTO proposes to amend Sec. 11.11 by adding a new paragraph
(g) to allow administrative revocation of registration or limited
recognition, based on mistake, materially false information, or the
omission of material information. Registration or limited recognition
would only be revoked after the issuance of a notice to show cause and
an opportunity to respond. This would parallel the existing provisions
in Sec. Sec. 11.7(j), 11.11(b), 11.20(a)(4), and 11.60(e).
The USPTO proposes to amend Sec. 11.18(c)(2) to set forth the
correct title of the Director of the Office of Enrollment and
Discipline.
The USPTO proposes to amend Sec. 11.19(a) to change ``patent
cases'' to ``patent matters'' and to clarify that a non-practitioner is
subject to the USPTO's disciplinary authority if the person engages in
or offers to engage in practice before the Office without proper
authority. The phrase ``including by the USPTO Director,'' which
modifies various types of public discipline, would be deleted as
surplusage. The USPTO Director's authority to administer discipline or
transfer a practitioner to disability inactive status is firmly
established. Thus, the inclusion of this phrase is unnecessary.
The USPTO proposes to amend Sec. 11.19(b)(1)(ii) to include
discipline on professional misconduct grounds alongside discipline on
ethical grounds. The inclusion of both is aimed at making clear that
discipline for professional misconduct also constitutes grounds for
discipline. This would result in no change in practice.
The USPTO proposes to amend Sec. 11.19(c) to properly cite a
subpart of part 11.
The USPTO proposes to amend Sec. 11.19 by adding a new paragraph
(e). This provision would make clear that the OED Director may select
any disciplinary procedure or procedures that are appropriate to the
situation at hand. For example, the OED Director is authorized in
appropriate circumstances to pursue reciprocal discipline under Sec.
11.24, while also instituting a disciplinary proceeding under Sec.
11.32.
The USPTO proposes to simplify Sec. 11.20(a)(4) to provide that
the conditions of probation shall be stated in the order imposing
probation.
The USPTO proposes to amend Sec. 11.20(c) to improve syntax and to
clarify that this provision merely describes the process set forth in
Sec. 11.29 for transferring to disability inactive status.
The USPTO proposes to amend Sec. 11.21 to remove the adjective
``brief'' that modifies the phrase ``statement of facts.'' The length
of a statement of facts depends on the complexity of the matter and the
issues presented. This revision would allow a level of detail in a
statement of facts appropriate to the particular matter.
The USPTO proposes to amend Sec. 11.22(c), currently reserved, to
require a practitioner to notify the OED Director of the practitioner
becoming publicly disciplined, disqualified from practice, transferred
to disability status, or convicted of a crime, within 30 days of such
occurrence as already required in Sec. Sec. 11.24, 11.25, or 11.29.
This revision would also clarify that a certified copy of the record or
order regarding the discipline, disqualification, conviction, or
transfer to disability status is clear and convincing evidence of such
event.
The USPTO proposes to amend Sec. 11.22(g) to correct erroneous
citations to Sec. 11.22(b)(1) and (b)(2). The correct citations are
Sec. 11.23(b)(1) and (b)(2).
The USPTO proposes to amend Sec. 11.22(h) to clarify that the list
of actions that the OED Director may take upon the conclusion of an
investigation is not necessarily limited to the four actions enumerated
therein.
The USPTO proposes to amend Sec. 11.24(a) to provide that a
certified copy of the record or order regarding public discipline in
another jurisdiction shall establish a prima facie case by clear and
convincing evidence that a
[[Page 45815]]
practitioner has, in fact, been publicly disciplined by that
jurisdiction. In addition, the provision would be amended to clarify
that the OED Director is permitted to exercise discretion in whether to
pursue reciprocal discipline in any given matter.
The USPTO proposes to amend Sec. 11.24(b) to enhance readability.
No change in practice is intended.
The USPTO proposes to amend Sec. 11.24(d)(1) to clarify the USPTO
Director's prerogative to order a disciplinary record be supplemented
with further information or argument.
The USPTO proposes to amend Sec. 11.24(e) to clarify that a final
adjudication in another jurisdiction that a practitioner has committed
ethical misconduct, regardless of the evidentiary standard applied,
shall establish a prima facie case that the practitioner has engaged in
misconduct under Sec. 11.804(h). This change would not affect the
availability of the defenses specified in Sec. 11.24(d)(1).
The USPTO proposes to amend Sec. 11.25(a) to remove the
requirement to self-report certain traffic violations where the sole
punishment adjudicated is a fine of $300.00 or less. The provision
would also be amended to clarify that the OED Director is permitted to
exercise discretion in whether to pursue discipline in any given matter
under this section.
The USPTO proposes to amend Sec. 11.25(b)(3) to clarify that the
USPTO Director may order that a disciplinary record be supplemented
with further information or argument.
The USPTO proposes to amend Sec. 11.25(e)(2) to allow
practitioners who are disciplined by the USPTO upon conviction of a
serious crime to apply for reinstatement immediately upon completing
their sentence, probation, or parole, whichever is later, provided they
are otherwise eligible for reinstatement. Under the current rule, a
practitioner must wait at least five years after the last of these
events before he or she is eligible to apply for reinstatement.
The USPTO proposes to amend Sec. 11.26 to clarify that evidence,
other than offers of compromise and statements about settlement made
during a settlement conference, may not be excluded merely because the
evidence was discussed or otherwise presented in a settlement
conference. Such evidence may be excludable for other evidentiary
reasons. The provision would also be amended to further clarify that
settlement conferences may occur at any time after an investigation is
commenced.
The USPTO proposes to amend Sec. 11.27(b) and (c) to clarify
procedures for exclusion on consent. Specifically, the revision would
allow the OED Director to file a response to a Sec. 11.27(a)
affidavit. Nothing herein is intended to alter the requirements under
Sec. 11.27(a), including but not limited to the Sec. 11.27(a)(2)
requirement that the statement of the nature of the pending
investigation or pending proceeding shall be specifically set forth in
the affidavit to the satisfaction of the OED Director. The revision
would also remove and reserve Sec. 11.27(c), in light of the
provisions of revised Sec. 11.26.
The USPTO proposes to amend Sec. 11.28(a) to replace the term
``patent cases'' with ``patent matters'', clarify the requirements for
moving to hold a proceeding in abeyance, remove the requirement that
such motion be made prior to a disciplinary hearing, and update cross-
references.
The USPTO proposes to amend Sec. 11.29(a) to clarify that the OED
Director possesses discretion as to whether to request that a
practitioner be transferred to disciplinary inactive status.
The USPTO proposes to amend Sec. 11.29(b) to incorporate the
``clear and convincing'' burden of proof currently set forth in Sec.
11.29(d) that a practitioner must satisfy to avoid a reciprocal
transfer to disability inactive status. The USPTO also proposes
enlarging the period of time to 40 days (instead of 30 days) for a
practitioner to respond to the OED Director's request to transfer the
practitioner to disability inactive status.
The USPTO proposes to amend Sec. 11.29(d) by revising the heading
of the paragraph. The provision would also be reorganized and amended
to clarify the USPTO Director's prerogative to order that the record be
supplemented with further information or argument. The proposed
revisions to Sec. 11.29(b) and (d) would parallel the organizational
structure of Sec. 11.24.
The USPTO proposes to amend Sec. 11.29(g) by clarifying that a
practitioner in disability inactive status must comply with Sec. Sec.
11.29 and 11.58, and not merely Sec. 11.58. This revision would make
no change in practice and would align with the provisions of revised
Sec. 11.58.
The USPTO proposes to amend Sec. 11.29(i) by updating cross-
references. The revisions would make no change in practice.
The USPTO proposes to amend Sec. 11.34(c) to expressly allow a
complaint to be filed in a disciplinary proceeding by delivering,
mailing, or electronically transmitting the document to a hearing
officer.
The USPTO proposes to amend Sec. 11.35(a) to make minor
corrections to syntax.
The USPTO proposes to amend Sec. 11.35(c) to state that a
complaint in a disciplinary matter may be served on the respondent's
attorney in lieu of the respondent, if the respondent is known to the
OED Director to be represented by an attorney under Sec. 11.40(a).
This revision would permit the OED Director to serve the respondent,
respondent's attorney, or both.
The USPTO proposes to amend Sec. 11.39(a) to clarify the process
by which hearing officers are designated in disciplinary proceedings.
This proposed amendment would continue the practice of designating
administrative law judges to serve as hearing officers.
The USPTO proposes to amend Sec. 11.39(b) to clarify that
administrative law judges appointed in accordance with 5 U.S.C. 3105
may be designated as hearing officers.
The USPTO proposes to amend 11.39(f) to correct a cross-reference.
The USPTO proposes to amend Sec. 11.40 by dividing the current
paragraph (b) into two paragraphs to facilitate ease in reading. In all
other respects, the provision would remain unchanged.
The USPTO proposes to amend Sec. 11.41(a) to expressly provide
that papers may be filed by delivering, mailing, or electronically
transmitting such documents to a hearing officer.
The USPTO proposes to amend Sec. 11.43 by changing the heading to
clarify that the provision applies only to motions before a hearing
officer and not to those before the USPTO Director. The USPTO also
proposes to amend the section to require motions to be accompanied by
written memoranda setting forth a concise statement of the facts and
supporting reasons, along with a citation of the authorities upon which
the movant relies. The proposed revisions would also require responses
to motions be filed within 14 days and served on the opposing party,
and reply memoranda served within 7 days after service of the opposing
party's response. The proposed revisions would also require the format
of memoranda to be double-spaced and printed in 12-point font, unless
otherwise ordered by the hearing officer.
The USPTO proposes to amend Sec. 11.44(a) to allow scheduling of a
hearing only on a date after the time for filing an answer has elapsed.
The USPTO proposes to amend Sec. 11.44(b) to clarify the sanctions
a hearing officer may impose for failure to appear at a disciplinary
hearing.
[[Page 45816]]
The USPTO proposes to amend Sec. 11.50 to clarify the existing
practice of prohibiting the admission of speculative evidence.
The USPTO proposes to amend Sec. 11.51(a) by revising it and
dividing it into a new Sec. 11.51(a)-(g). The revisions would provide
clarity and confirm the existing regulatory requirement that if a
respondent demands testimony or the production of documents from a
USPTO employee, the respondent must comply with part 104 of this
chapter. The rule would also make clear that a deposition may be
videotaped if desired. The term ``deposition expenses'' would replace
the phrase ``expenses for a court reporter and preparing, serving, and
filing depositions''. Deposition expenses may include, but are not
limited to, fees for court reporters, videographers, transcripts, and
room rentals; witness appearance and travel; service of process; and
costs for preparing, serving, and filing depositions. This revision
would not affect those expenses that are recoverable under Sec.
11.60(d)(2).
The USPTO proposes to amend Sec. 11.51(b) by redesignating it as
Sec. 11.51(h). The revisions to this paragraph would make no change to
existing practice.
The USPTO proposes to amend Sec. 11.52 by reorganizing the section
to improve clarity. The revisions would limit the scope of written
discovery to relevant evidence only, as opposed to evidence that may be
reasonably calculated to lead to the discovery of admissible evidence.
The revisions would also provide that requests for admission may be
used to admit the genuineness of documents and provide consequences for
the failure to respond to requests for admission. Finally, the
revisions would expand the scope of information that parties must
provide regarding expert witnesses to include a complete statement of
all opinions to which the expert is expected to testify, the basis and
reasons therefor, and a description of all facts or data considered by
the expert in forming the opinions.
The USPTO proposes to amend Sec. 11.53 to specify the timing and
other requirements of post-hearing memoranda, unless otherwise ordered
by the hearing officer. The rule would also allow the hearing officer
to enlarge the time permitted for filing post-hearing memoranda and to
increase page limits upon a showing of good cause.
The USPTO proposes to amend Sec. 11.54 to require a hearing
officer to transmit the record of the proceeding to the OED Director
within 14 days of the date of the initial decision or as soon as
practicable. The USPTO proposes to amend Sec. 11.54(a)(1) by requiring
an initial decision to make ``specific'' references to the record
instead of ``appropriate'' references to the record. The provision
currently located in Sec. 11.54(a)(2) that describes the process that
the hearing officer shall take with respect to the transmission of the
decision and the record would be moved to Sec. 11.54(c). It would also
be revised to require the hearing officer to forward to the OED
Director the record of proceedings within 14 days, or as soon as
practicable, after the date of the initial decision. In addition, the
provision currently located in Sec. 11.54(a)(2) that discusses the
point in time at which the decision of the hearing officer becomes the
decision of the USPTO Director would be moved to Sec. 11.54(d). This
section would also be amended to remove an unnecessary reference to
default judgments. Thus, any decision of a hearing officer, if not
appealed, would become final without regard to whether the decision
results from default.
The USPTO proposes to amend Sec. 11.55 to more closely align the
language with changes to the Federal Rules of Appellate Procedure and
provide clarity as to the responsibilities of parties during appeals to
the USPTO Director. The revisions would establish a procedure for
filing notices of appeal and provide briefing timelines. Currently, the
rule allows an appellant 30 days to file a brief. The revisions would
allow 14 days in which to file a notice of appeal and 45 days
thereafter in which to file the appellate brief. The revisions would
also remove current paragraph (i), which is duplicative of a similar
provision in Sec. 11.54. Finally, the revisions would add a new
paragraph (o) that would govern motions practice before the USPTO
Director. The procedures in new paragraph (o) would generally parallel
those in Sec. 11.43.
The USPTO proposes to amend Sec. 11.56(c) to allow a party to file
a response to a request for reconsideration within 14 days after such
request is made. The revision would explicitly require that such
request be based on newly discovered evidence or clear error of law or
fact.
The USPTO proposes to amend Sec. 11.57 by reorganizing the
provision and revising it to conform with Local Civil Rule 83.5 of the
Local Rules for the U.S. District Court for the Eastern District of
Virginia (http://www.vaed.uscourts.gov/localrules/LocalRulesEDVA.pdf).
More specifically, Sec. 11.57(a) would be revised to require that any
petition for review of a final decision of the USPTO Director must be
filed within 30 days after the date of the final decision.
The USPTO proposes to amend Sec. 11.58 by revising, subdividing,
and renumbering the provisions describing the duties of disciplined
practitioners or practitioners on disability inactive status. The
proposed revisions are made with an eye toward simplifying the rule so
that disciplined practitioners may more easily comply with its
provisions. Where the practitioner believes compliance with the rule
would be unduly cumbersome, a practitioner would be permitted to
petition for relief. The revised rule would continue to allow a
suspended or excluded practitioner to act as a paralegal provided
certain conditions are met, such as serving under the supervision of a
practitioner as defined in part 11. The revisions would permit, rather
than require, the USPTO Director to grant a period of limited
recognition to allow a disciplined practitioner to wind up his or her
practice. The proposed revisions to Sec. 11.58 would in no way limit
the OED Director's ability to take action for violations of the rule.
For example, the OED Director is still authorized to take action
against a practitioner for violating the terms of disciplinary
probation or to seek exclusion or an additional suspension for
practitioners who violate disciplinary rules while excluded, suspended,
or in disability inactive status. Finally, the proposed revisions would
strike references to resigned practitioners. Obligations relating to
resigned practitioners would be consolidated in Sec. 11.11(e).
The USPTO proposes to amend Sec. 11.60 to remove references to
resigned status. Procedures for resignation and reinstatement from a
resigned status would be consolidated in Sec. 11.11. For this reason,
the USPTO proposes to amend Sec. 11.60(b) and (c) to eliminate
references to reinstatement and Sec. 11.58 compliance requirements for
resigned practitioners. The USPTO also proposes to amend the heading of
Sec. 11.60 to explicitly reflect that it applies only to disciplined
practitioners.
The USPTO proposes to re-designate the current Sec. 11.60(f) as
Sec. 11.60(g) and amend the paragraph by inserting a new provision
that would clarify that a final decision by the OED Director denying
reinstatement to a practitioner is not a final agency action. A
suspended or excluded party dissatisfied with the decision of the OED
Director regarding his or her reinstatement may seek review of the
decision by petitioning the USPTO Director in accordance with Sec.
11.2(d).
The USPTO proposes to re-designate the current Sec. 11.60(g) as
Sec. 11.60(h) and
[[Page 45817]]
amend the paragraph to allow a notice of a practitioner's intent to
seek reinstatement to be published prior to the expiration date of the
suspension or exclusion. The purpose of this revision is to speed the
processing of petitions for reinstatement while still providing the
requisite public notice.
The USPTO proposes to amend Sec. 11.106(b) to allow a practitioner
to reveal information relating to the representation of a client to
detect and resolve conflicts of interest arising from the
practitioner's change of employment or from changes in the composition
or ownership of a law firm, but only if the revealed information would
not compromise the attorney-client privilege or otherwise prejudice the
client. This amendment would cause this provision to more closely align
with the 2012 amendments to ABA Model Rule 1.6.
The USPTO proposes to amend Sec. 11.106 by adding a new paragraph
(d) that would require a practitioner to make reasonable efforts to
prevent the inadvertent or unauthorized disclosure of, or unauthorized
access to, information relating to the representation of a client. This
amendment would cause this provision to more closely align with the
2012 amendments to ABA Model Rule 1.6.
The USPTO proposes to amend Sec. 11.118 to clarify that a
practitioner may not use information learned from a prospective client
except as otherwise provided, regardless of whether the information was
learned in a discussion. This amendment would cause this provision to
more closely align with the 2012 amendments to ABA Model Rule 1.18.
The USPTO proposes to amend Sec. 11.702 to establish standards
that, if met, would qualify practitioners to state they are a certified
specialist in a particular field of law. This amendment would cause
this provision to more closely align with the 2012 amendments to ABA
Model Rule 7.2.
The USPTO proposes to amend Sec. 11.703 to clarify that the
limitations on solicitation apply to any person without regard to
whether the practitioner considers the targets of the solicitation to
actually be prospective clients. This amendment would cause this
provision to more closely align with the 2012 amendments to ABA Model
Rule 7.3.
The USPTO proposes to amend Sec. 11.704(e) to clarify that
individuals granted limited recognition under Sec. 11.9 may not use
the designation ``registered.''
The USPTO proposes to amend Sec. 11.804(b) to clarify that being
convicted of a qualifying crime is a form of misconduct.
The USPTO proposes to amend Sec. 11.804(h) to provide that it is
misconduct to be publicly disciplined on ethical or professional
misconduct grounds by a country having disciplinary jurisdiction over
the practitioner.
Rulemaking Requirements
A. Administrative Procedure Act: The changes in this rulemaking
involve rules of agency practice and procedure and/or interpretive
rules (see Perez v. Mortgage 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.'')
(citations 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 are
procedural where they do not change the substantive standard for
reviewing claims.)).
Accordingly, prior notice and opportunity for public comment for
the changes in this 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 procedures are not required when an agency ``issue[s] an
initial interpretive rule'' or when it amends or repeals that
interpretive rule.); and 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), do 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))). Nevertheless, the USPTO has chosen to seek public comment
before implementing the rule to benefit from the public's input.
B. Regulatory Flexibility Act: For the reasons set forth herein,
the Senior Counsel for Regulatory and Legislative Affairs, Office of
General Law, of the USPTO has certified to the Chief Counsel for
Advocacy of the Small Business Administration that the changes proposed
in this rule will not have a significant economic impact on a
substantial number of small entities (see 5 U.S.C. 605(b)).
The changes in this notice of proposed rulemaking fall into one of
three categories: (1) Harmonization of the USPTO Rules of Professional
Conduct with the ABA Model Rules of Professional Conduct; (2) changes
to the rules governing the recognition to practice before the Office to
implement new requirements and simplify and otherwise improve
consistency with existing requirements to facilitate the public's
compliance with existing regulations, including revisions to
timeframes, procedures concerning the registration exam, provisions
related to the revocation of an individual's registration or limited
recognition in limited circumstances, and provisions for reinstatement;
and (3) non-substantive changes, such as increased structural
parallelism between similar provisions; increased readability of
provisions; corrections to spelling, grammar, and cross-references;
harmonization of terminology; correction of syntax formats to comport
with the Federal Register Document Drafting Handbook; and
reorganization of paragraph structure within particular rules and other
changes to improve clarity in the regulations.
This proposed rule would apply to the approximately 47,000
registered patent practitioners currently appearing before the Office,
as well as licensed attorneys practicing in trademark and other non-
patent matters before the Office. The USPTO does not collect or
maintain statistics on the size status of impacted entities, which
would be required to determine the number of small entities that would
be affected by the proposed rule. However, a large number of the
changes proposed in this rule are not expected to have any impact on
affected entities. For example, correction of spelling and grammar,
harmonization of terminology, correction of syntax formats, and
reorganization of paragraph structures are administrative in nature and
would have no impact on affected entities.
The USPTO also proposes to make changes to the rules governing the
recognition to practice before the Office and to certain rules
governing the process of investigations and conduct of disciplinary
proceedings to clarify existing policy and practice and to update the
USPTO Rules of Professional Conduct to reflect widely-adopted changes
to the ABA Model Rules of Professional Conduct. These revisions impact
rules of procedure and are not expected to substantively impact
parties. The intent of these changes is to make the USPTO regulations
more clear and to streamline procedural requirements. Where the
proposed
[[Page 45818]]
rulemaking arguably increases regulatory burden, such burdens are
minimal and outweighed by the benefits they would provide.
This proposed rule would also provide applicants for registration
or limited recognition the ability to request extensions of time to
schedule the registration exam for a fee. The proposed new fee of $115
would recover the estimated average cost to the Office of related
processing, services, and materials. The USPTO expects that this
increased scheduling flexibility will save those applicants who would
have otherwise missed the window in which to sit for the registration
examination the time and expense of having to reapply to take the
examination. The cost of reapplying for the examination is currently
$300, exclusive of any nonrefundable fees paid to the commercial
testing service that administers the examination. The USPTO estimates
that this new regulatory flexibility will save the public at least
$92,500. The authorization for this fee is 35 U.S.C. 41(d)(2)(A).
In sum, any requirements resulting from these proposed changes are
of minimal or no additional burden to those practicing before the
Office. For these reasons, this 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
E.O. 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with E.O. 13563 (Jan. 18, 2011).
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 online 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 13771 (Reducing Regulation and Controlling
Regulatory Costs): This proposed rule is not an E.O. 13771 (Jan. 30,
2017) regulatory action because this proposed rule is not significant
under E.O. 12866 (Sept. 30, 1993).
F. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under E.O. 13132 (Aug. 4, 1999).
G. 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 E.O. 13175 (Nov. 6, 2000).
H. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under E.O. 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 E.O. 13211 (May 18, 2001).
I. 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 E.O.
12988 (Feb. 5, 1996).
J. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under E.O. 13045 (Apr. 21, 1997).
K. Executive Order 12630 (Taking of Private Property): This
rulemaking will not effect a taking of private property or otherwise
have taking implications under E.O. 12630 (Mar. 15, 1988).
L. 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 rulemaking
are not expected to result in an annual effect on the economy of $100
million 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 rulemaking is not expected to be considered ``major
rule'' as defined in 5 U.S.C. 804(2).
M. Unfunded Mandates Reform Act of 1995: The changes in this
rulemaking 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 (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 (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.).
N. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969 (see 42 U.S.C. 4321 et seq.).
O. 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 that involve the use of
technical standards.
P. 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
that are subject to review and approval by the Office of Management and
Budget (OMB) under the Paperwork Reduction Act. The collections of
information involved in this rulemaking have been reviewed and
previously approved by OMB under OMB control numbers 0651-0012
(Admission to Practice and Roster of Registered Patent Attorneys and
Agents Admitted to Practice before the USPTO) and 0651-0017
(Practitioner Conduct and Discipline). In addition, modifications to
0651-0012 because of this rulemaking will be submitted to OMB for
approval prior to this rule becoming effective. The proposed
modifications include updating the process under 37 CFR 11.7 and 11.9
for the Form PTO-158 Application for
[[Page 45819]]
Registration to Practice before the USPTO, to include the option for
applicants to extend their time window to schedule their registration
examination, therefore reducing the number of applicants who would need
to reapply because they did not take the examination in time. The USPTO
estimates that the number of Applications for Registration to Practice
before the USPTO would decrease by 500 responses due to applicants
obtaining an extension rather than reapplying for their registration.
Another proposed modification is the removal of USPTO-based testing
services.
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
has a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Biologics, Courts, Freedom
of information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
37 CFR Part 11
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
For the reasons set forth in the preamble, the United States Patent
and Trademark Office proposes to amend parts 1 and 11 of title 37 of
the CFR as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority section for part 1 continues to read as follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
0
2. Amend Sec. 1.21 by removing and reserving paragraph (a)(1)(ii)(B),
adding paragraph (a)(1)(iv), and adding introductory text to paragraph
(a)(9) to read as follows:
Sec. 1.21 Miscellaneous fees and charges.
* * * * *
(a) * * *
(1) * * *
(ii) * * *
(B) [Reserved]
* * * * *
(iv) Request for extension of time in which to schedule examination
for registration to practice (non-refundable): $115.00.
* * * * *
(9) Administrative reinstatement fees:
* * * * *
PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT
AND TRADEMARK OFFICE
0
3. The authority citation for 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,
41; sec. 1, Pub. L. 113-227, 128 Stat. 2114.
0
4. Amend Sec. 11.1 by revising the definitions of ``conviction or
convicted,'' ``practitioner,'' ``roster,'' ``serious crime,'' and
``state'' to read as follows:
Sec. 11.1 Definitions.
* * * * *
Conviction or convicted means any confession to a crime; a verdict
or judgment finding a person guilty of a crime; any entered plea,
including nolo contendere or Alford plea, to a crime; or receipt of
deferred adjudication (whether judgment or sentence has been entered or
not) for an accused or pled crime.
* * * * *
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
patent matters under Sec. 11.9(a) or (b); or
(4) An individual authorized to practice before the Office under
Sec. 11.16(d).
* * * * *
Roster or register means a list of individuals who have been
registered as either a patent attorney or patent agent.
* * * * *
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 any criminal offense punishable by death or imprisonment
of more than one year; 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
5. Amend Sec. 11.2 by revising paragraphs (b)(2) and (4) to read as
follows:
Sec. 11.2 Director of the Office of Enrollment and Discipline.
* * * * *
(b) * * *
(2) Receive and act upon applications for registration, prepare and
grade the registration examination, maintain the register provided for
in Sec. 11.5, and perform such other duties in connection with
enrollment and recognition of attorneys and agents as may be necessary.
* * * * *
(4) Conduct investigations of matters involving possible grounds
for discipline. Except in matters meriting summary dismissal, no
disposition under Sec. 11.22(h) shall be recommended or undertaken by
the OED Director until the subject of the investigation has been
afforded an opportunity to respond to a reasonable inquiry by the OED
Director.
* * * * *
0
6. Add Sec. 11.4 to subpart A to read as follows:
Sec. 11.4 Computing time.
Computing time. The following rules apply in computing any time
period specified in this part where the period is stated in days or a
longer unit of time:
(a) Exclude the day of the event that triggers the period;
(b) Count every day, including intermediate Saturdays, Sundays, and
legal holidays; and
(c) Include the last day of the period, but if the last day is a
Saturday, Sunday, or legal holiday, the period continues to run until
the end of the next day that is not a Saturday, Sunday, or legal
holiday.
0
7. Amend Sec. 11.5 by revising paragraphs (a), the introductory text
to (b)(1), and (b)(2) to read as follows:
Sec. 11.5 Register of attorneys and agents in patent matters;
practice before the Office.
(a) Register of attorneys and agents. 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
[[Page 45820]]
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) * * *
(1) Practice before the Office in patent matters. Practice before
the Office in patent matters includes, but is not limited to, preparing
or 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
Patent Trial and Appeal Board, or other patent proceeding. Registration
to practice before the Office in patent matters authorizes the
performance of those services that 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:
* * * * *
(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 or
prosecuting an application for trademark registration; preparing an
amendment that may require written argument to establish the
registrability of the mark; preparing or prosecuting a document for
maintaining, correcting, amending, canceling, surrendering, or
otherwise affecting a registration; and conducting an opposition,
cancellation, or concurrent use proceeding; or conducting an appeal to
the Trademark Trial and Appeal Board.
0
8. Amend Sec. 11.7 by revising paragraphs (b)(1)(i)(B) and (b)(2) and
(3); adding paragraph (b)(4); revising paragraphs (d)(3), (e), (f),
(g)(1), and (g)(2)(ii); and adding paragraph (l) to read as follows:
Sec. 11.7 Requirements for registration.
* * * * *
(b)(1) * * *
(i) * * *
(B) Payment of the fees required by Sec. 1.21(a)(1) of this
chapter;
* * * * *
(2) An individual failing the examination may, upon receipt of
notice of failure from OED, reapply for admission to the examination.
An individual failing the examination for the first or second time must
wait 30 days after the date the individual last took the examination
before retaking the examination. An individual failing the examination
for the third or fourth time must wait 90 days after the date the
individual last took the examination before retaking the examination.
An individual may not take the examination more than five times.
However, upon petition under Sec. 11.2(c), the OED Director may, at
his or her discretion, waive this limitation upon such conditions as
the OED Director may prescribe. An individual reapplying shall:
(i) File a completed application for registration form including
all requested information and supporting documents not previously
provided to OED,
(ii) Pay the fees required by Sec. 1.21(a)(1) of this chapter,
(iii) For aliens, provide proof that registration is not
inconsistent with the terms of their visa or entry into the United
States, and
(iv) Provide satisfactory proof of good moral character and
reputation.
(3) An individual failing to file a complete application for
registration will not be admitted to the examination and will be
notified of the incompleteness. Applications for registration that are
incomplete as originally submitted will be considered only when they
have been completed and received by OED, provided that this occurs
within 60 days of the mailing date of the notice of incompleteness.
Thereafter, a new and complete application for registration must be
filed. Only an individual approved as satisfying the requirements of
paragraph (b)(1)(i) of this section may be admitted to the examination.
(4)(i) A notice of admission shall be sent to those individuals who
have been admitted to the registration examination. This notice shall
specify a certain period of time in which to schedule and take the
examination.
(ii) An individual may request an extension of this period of time
by written request to the OED Director. Such request must be received
by the OED Director prior to the expiration of the period specified in
the notice as extended by any previously granted extension and must
include the fee specified in Sec. 1.21(a)(1)(iv). Upon the granting of
the request, the period of time in which the individual may schedule
and take the registration examination shall be extended by 90 days.
(iii) An individual who does not take the registration examination
within the period of time specified in the notice may not take the
examination without filing a new application for registration, as set
forth in paragraph (b)(1)(i) of this section.
* * * * *
(d) * * *
* * * * *
(3) Certain former Office employees who were not serving in the
patent examining corps upon their separation from the Office. The OED
Director may waive the taking of a registration examination in the case
of a former Office employee meeting the requirements of paragraph
(b)(1)(i)(C) of this section who, by petition, demonstrates the
necessary legal qualifications to render to patent applicants and
others valuable service and assistance in the preparation and
prosecution of their applications or other business before the Office
by showing that he or she has:
(i) Exhibited comprehensive knowledge of patent law equivalent to
that shown by passing the registration examination as a result of
having been in a position of responsibility in the Office in which he
or she:
(A) Provided substantial guidance on patent examination policy,
including the development of rule or procedure changes, patent
examination guidelines, changes to the Manual of Patent Examining
Procedure, training or testing materials for the patent examining
corps, or materials for the registration examination or continuing
legal education; or
(B) Represented the Office in patent matters before Federal courts;
and
(ii) Was rated at least fully successful in each quality
performance element of his or her performance plan for said position
for the last two complete rating periods in the Office and was not
under an oral or written warning regarding such performance elements at
the time of separation from the Office.
* * * * *
(e) Examination results. Notification of the examination results is
final. Within 60 days of the mailing date of a notice of failure, the
individual is entitled to inspect, but not copy, the questions and
answers he or she
[[Page 45821]]
incorrectly answered. Review will be under supervision. No notes may be
taken during such review. Substantive review of the answers or
questions may not be pursued by petition for regrade.
(f) Application for reciprocal recognition. An individual seeking
reciprocal recognition under Sec. 11.6(c), in addition to satisfying
the provisions of paragraphs (a) and (b) of this section, and the
provisions of Sec. 11.8(b), shall pay the application fee required by
Sec. 1.21(a)(1)(i) of this chapter upon filing an application for
registration.
(g) * * * (1) Every individual seeking recognition shall answer all
questions in the application for registration and request(s) for
information and evidence issued by OED; disclose all relevant facts,
dates, and information; and provide verified copies of documents
relevant to his or her good moral character and reputation. An
individual who is an attorney shall submit a certified copy of each of
his or her State bar applications and determinations of character and
reputation, if available.
(2) * * *
* * * * *
(ii) The OED Director, in considering an application for
registration by an attorney, may accept a State bar's determination of
character and reputation as meeting the requirements set forth in
paragraph (a)(2)(i) of this section if, after review, the Office finds
no substantial discrepancy between the information provided with his or
her application for registration and the State bar application and
determination of character and reputation, provided that acceptance is
not inconsistent with other rules and the requirements of 35 U.S.C.
2(b)(2)(D).
* * * * *
(l) Transfer of status from agent to attorney. An agent registered
under Sec. 11.6(b) may request registration as an attorney under Sec.
11.6(a). The agent shall demonstrate his or her good standing as an
attorney and pay the fee required by Sec. 1.21(a)(2)(iii) of this
chapter.
0
9. Amend Sec. 11.9 by revising paragraphs (a) and (b) and adding
paragraphs (d), (e), and (f), to read as follows:
Sec. 11.9 Limited recognition in patent matters.
(a) Any individual not registered under Sec. 11.6 may, upon a
showing of circumstances that render it necessary or justifiable and
that the individual is of good moral character and reputation, be given
limited recognition by the OED Director to prosecute as attorney or
agent a specified patent application or specified patent applications.
Limited recognition under this paragraph shall not extend further than
the application or applications specified. Limited recognition shall
not be granted to individuals who have passed the examination or to
those for whom the examination has been waived while such individual's
application for registration to practice before the Office in patent
matters is pending.
(b) A nonimmigrant alien residing in the United States and
fulfilling the provisions of paragraphs (d) and (e) of this section may
be granted limited recognition if the nonimmigrant alien is authorized
by the United States Government to be employed or trained in the United
States in the capacity of representing a patent applicant by presenting
or prosecuting a patent application. Limited recognition shall be
granted for a period consistent with the terms of authorized employment
or training. Limited recognition shall not be granted or extended to a
non-United States citizen residing abroad. If granted, limited
recognition shall automatically expire upon the nonimmigrant alien's
departure from the United States.
* * * * *
(d) No individual will be granted limited recognition to practice
before the Office under paragraph (b) of this section unless he or she
has:
(1) Applied to the USPTO Director in writing by completing an
application form supplied by the OED Director and furnishing all
requested information and material; and
(2) Established to the satisfaction of the OED Director that he or
she:
(i) Possesses good moral character and reputation;
(ii) Possesses the legal, scientific, and technical qualifications
necessary for him or her to render applicants valuable service; and
(iii) Is competent to advise and assist patent applicants in the
presentation and prosecution of their applications before the Office.
(e)(1) To enable the OED Director to determine whether an
individual has the qualifications specified in paragraph (d)(2) of this
section, the individual shall:
(i) File a complete application for limited recognition each time
admission to the registration examination is requested. A complete
application for limited recognition includes:
(A) An application for limited recognition form supplied by the OED
Director wherein all requested information and supporting documents are
furnished;
(B) Payment of the fees required by Sec. 1.21(a)(1) of this
chapter;
(C) Satisfactory proof of scientific and technical qualifications;
and
(D) Satisfactory proof that the terms of the individual's
immigration status or entry into the United States authorize employment
or training in the preparation and prosecution of patents for others;
and
(ii) Pass the registration examination. Each individual seeking
limited recognition under this section must take and pass the
registration examination to enable the OED Director to determine
whether the individual possesses the legal and competence
qualifications specified in paragraphs (d)(2)(ii) and (d)(2)(iii) of
this section.
(2) An individual failing the examination may, upon receipt of
notice of failure from OED, reapply for admission to the examination.
An individual failing the examination for the first or second time must
wait 30 days after the date the individual last took the examination
before retaking the examination. An individual failing the examination
for the third or fourth time must wait 90 days after the date the
individual last took the examination before retaking the examination.
An individual may not take the examination more than five times.
However, upon petition under Sec. 11.2(c), the OED Director may, at
his or her discretion, waive this limitation upon such conditions as
the OED Director may prescribe. An individual reapplying shall:
(i) File a complete application for limited recognition form,
including all requested information and supporting documents not
previously provided to OED;
(ii) Pay the application fee required by Sec. 1.21(a)(1) of this
chapter;
(iii) Provide satisfactory proof that the terms of the individual's
immigration status or entry into the United States authorize employment
or training in the preparation and prosecution of patents for others;
and
(iv) Provide satisfactory proof of good moral character and
reputation.
(3) An individual failing to file a complete application will not
be admitted to the examination and will be notified of such deficiency.
Applications for limited recognition that are incomplete will be
considered only when the deficiency has been cured, provided that this
occurs within 60 days of the mailing date of the notice of deficiency.
Thereafter, a new and complete application for limited recognition must
be filed. An individual seeking limited recognition under paragraph (b)
of this section must satisfy the requirements of paragraph (e)(1)(i) of
[[Page 45822]]
this section to be admitted to the examination.
(4)(i) A notice of admission shall be sent to those individuals who
have been admitted to the registration examination. This notice shall
specify a certain period of time in which to schedule and take the
examination.
(ii) An individual may request an extension of this period of time
by written request to the OED Director. Such request must be received
by the OED Director prior to the expiration of the period specified in
the notice, as extended by any previously granted extension, and must
include the fee specified in Sec. 1.21(a)(1)(iv). Upon the granting of
the request, the period of time in which the individual may schedule
and take the examination shall be extended by 90 days.
(iii) An individual who does not take the examination within the
period of time specified in the notice may not take the examination
without filing a new application for limited recognition as set forth
in paragraph (e)(1)(i) of this section.
(f) Applications for reinstatement of limited recognition.
(1) A person whose grant of limited recognition expired less than
five years before the application for reinstatement may be reinstated
provided the person:
(i) Files a complete application that includes:
(A) A request for reinstatement with the fee required by Sec.
1.21(a)(9)(ii); and
(B) Satisfactory proof that the terms of the individual's
immigration status or entry into the United States authorize employment
or training in the preparation and prosecution of patents for others;
and
(ii) Provides satisfactory proof of good moral character and
reputation.
(2) Persons whose grant of limited recognition expired five years
or more before filing a complete application for reinstatement must
comply with paragraph (f)(1) of this section and provide objective
evidence that they continue to possess the necessary legal
qualifications to render applicants valuable service to patent
applicants.
0
10. Revise Sec. 11.10 to read as follows:
Sec. 11.10 Restrictions on practice in patent matters; former and
current Office employees; government employees.
(a) Only practitioners registered under Sec. 11.6; individuals
given limited recognition under Sec. 11.9(a) or (b) or Sec. 11.16; or
individuals admitted pro hac vice as provided in Sec. 41.5(a) or Sec.
42.10(c) are permitted to represent others before the Office in patent
matters.
(b) Post employment agreement of former Office employee. No
individual who has served in the patent examining corps or elsewhere in
the Office may practice before the Office after termination of his or
her service, unless he or she signs a written undertaking agreeing:
(1) To not knowingly act as agent or attorney for or otherwise
represent or assist in any manner the representation of any other
person:
(i) Before the Office,
(ii) In connection with any particular patent or patent
application,
(iii) In which said employee participated personally and
substantially as an employee of the Office; and
(2) To not knowingly act within two years after terminating
employment by the Office as agent or attorney for, or otherwise
represent or assist in any manner, the representation of any other
person:
(i) Before the Office,
(ii) In connection with any particular patent or patent
application,
(iii) If such patent or patent application was pending under the
employee's official responsibility as an officer or employee within a
period of one year prior to the termination of such responsibility.
0
11. Amend Sec. 11.11 by:
0
a. Revising paragraphs (b)(2), (3), (5), and (6);
0
b. Adding paragraph (b)(7);
0
c. Revising paragraphs (c)(1) and (2);
0
d. Adding paragraph (c)(3);
0
e. Revising paragraph (e)(1);
0
f. Revising paragraph (f)(2); and
0
g. Adding paragraph (g).
The revisions read as follows:
Sec. 11.11 Administrative suspension, inactivation, resignation,
reinstatement, and revocation.
* * * * *
(b) * * *
(2) In the event a practitioner fails to comply with the
requirements specified in a notice provided pursuant to paragraph
(b)(1) of this section within the time allowed, the OED Director shall
publish and send to the practitioner a notice to show cause why the
practitioner should not be administratively suspended. Such notice
shall be sent in the same manner as set forth in paragraph (b)(1) of
this section. The OED Director shall file a copy of the notice to show
cause with the USPTO Director.
(3) A practitioner to whom a notice to show cause under this
section has been issued shall be allowed 30 days from the date of the
notice to show cause to file a response with the USPTO Director. The
response should address any factual and legal bases why the
practitioner should not be administratively suspended. The practitioner
shall serve the OED Director with a copy of the response at the time it
is filed with the USPTO Director. Within 10 days of receiving a copy of
the response, the OED Director may file a reply with the USPTO
Director. A copy of the reply by the OED Director shall be sent to the
practitioner at the practitioner's address of record. If the USPTO
Director determines that there are no genuine issues of material fact
regarding the Office's compliance with the notice requirements under
this section or the failure of the practitioner to pay the requisite
fees, the USPTO Director shall enter an order administratively
suspending the practitioner. Otherwise, the USPTO Director shall enter
an appropriate order dismissing the notice to show cause. Any request
for reconsideration of the USPTO Director's decision must be filed
within 20 days after the date such decision is rendered by the USPTO
Director. Nothing herein shall permit an administratively suspended
practitioner to seek a stay of the suspension during the pendency of
any review of the USPTO Director's final decision. If, prior to the
USPTO Director entering an order under this section, the OED Director
determines that a practitioner has complied with requirements specified
in the notice to show cause, the OED Director may withdraw the notice
to show cause, and the practitioner will not be administratively
suspended.
* * * * *
(5) A practitioner is subject to investigation and discipline for
his or her conduct prior to, during, or after the period he or she was
administratively suspended.
(6) A practitioner is prohibited from practicing before the Office
in patent matters while administratively suspended. A practitioner who
knows he or she has been administratively suspended is subject to
discipline for failing to comply with the provisions of this paragraph
and shall comply with the provisions of Sec. 11.116.
(7) An administratively suspended practitioner may request
reinstatement by complying with paragraph (f)(1) of this section.
(c) * * * (1) Any registered practitioner who shall become employed
by the Office shall comply with Sec. 11.116 for withdrawal from all
patent, trademark, and other non-patent matters wherein he or she
represents an applicant or other person, and notify the OED Director in
writing of said employment on the first day of said employment. The
name of any
[[Page 45823]]
registered practitioner employed by the Office shall be endorsed on the
register as administratively inactive. Upon separation from the Office,
an administratively inactive practitioner may request reactivation by
complying with paragraph (f)(2) of this section.
(2) Any registered practitioner who is a judge of a court of
record, full-time court commissioner, U.S. bankruptcy judge, U.S.
magistrate judge, or a retired judge who is eligible for temporary
judicial assignment and is not engaged in the practice of law may
request, in writing, that his or her name be endorsed on the register
as administratively inactive. Upon acceptance of the request, the OED
Director shall endorse the name of the practitioner as administratively
inactive. Following separation from the bench, the practitioner may
request reactivation by complying with paragraph (f)(2) of this
section.
(3) An administratively inactive practitioner remains subject to
the provisions of the USPTO Rules of Professional Conduct and to
proceedings and sanctions under Sec. Sec. 11.19 through 11.58 for
conduct that violates a provision of the USPTO Rules of Professional
Conduct prior to or during such administrative inactivity.
* * * * *
(e) * * * (1) A registered practitioner or a practitioner
recognized under Sec. 11.14(c) may request to resign by notifying the
OED Director in writing of such intent, unless such practitioner is
under investigation under Sec. 11.22 for a possible violation of the
USPTO Rules of Professional Conduct, is a practitioner against whom
probable cause has been found by a panel of the Committee on Discipline
under Sec. 11.23(b), or is a respondent in a pending proceeding
instituted under Sec. 11.24, Sec. 11.25, or Sec. 11.29. Upon
acceptance in writing by the OED Director of such request, that
practitioner shall no longer be eligible to practice before the Office
in patent matters but shall continue to file a change of address for
five years thereafter in order that he or she may be located in the
event information regarding the practitioner's conduct comes to the
attention of the OED Director or any grievance is made about his or her
conduct while he or she engaged in practice before the Office. The name
of any practitioner whose resignation is accepted shall be endorsed as
resigned, and notice thereof published in the Official Gazette. Upon
acceptance of the resignation by the OED Director, the practitioner
must comply with the provisions of Sec. 11.116. A practitioner is
subject to investigation and discipline for his or her conduct that
occurred prior to, during, or after the period of his or her
resignation.
* * * * *
(f) * * *
(2) A practitioner who has been administratively inactivated
pursuant to paragraph (c) of this section may be reactivated after his
or her employment with the Office ceases or his or her employment in a
judicial capacity ceases, provided the following is filed with the OED
Director: (i) A completed application for reactivation on a form
supplied by the OED Director; (ii) a data sheet; (iii) a signed written
undertaking required by Sec. 11.10(b); and (iv) the fee set forth in
Sec. 1.21(a)(9)(ii) of this chapter. A practitioner is subject to
investigation and discipline for his or her conduct before, during, or
after the period of his or her inactivation. Administratively inactive
practitioners who have been separated from the Office or have ceased to
be employed in a judicial capacity for five or more years prior to
filing a complete application for reactivation shall be required to
provide objective evidence that they continue to possess the necessary
legal qualifications to render valuable service to patent applicants.
* * * * *
(g) Administrative revocation. (1) The USPTO Director may revoke an
individual's registration or limited recognition if:
(i) the registration or limited recognition was issued through
mistake or inadvertence, or
(ii) the individual's application for registration or limited
recognition contains materially false information or omits material
information.
(2) Whenever it appears that grounds for administrative revocation
exist, the OED Director shall issue to the individual a notice to show
cause why the individual's registration or limited recognition should
not be revoked.
(i) The notice to show cause shall be served on the individual in
the same manner as described in Sec. 11.35.
(ii) The notice to show cause shall state the grounds for the
proposed revocation.
(iii) The OED Director shall file a copy of the notice to show
cause with the USPTO Director.
(3) Within 30 days after service of the notice to show cause, the
individual may file a response to the notice to show cause with the
USPTO Director. The response should address any factual or legal bases
why the individual's registration or limited recognition should not be
revoked. The individual shall serve the OED Director with a copy of the
response at the time it is filed with the USPTO Director. Within 10
days of receiving a copy of the response, the OED Director may file a
reply with the USPTO Director. A copy of the reply by the OED Director
shall be sent to the individual at the individual's address of record.
(4) If the USPTO Director determines that there are no genuine
issues of material fact regarding the Office's compliance with the
notice requirements under this section or the grounds for the notice to
show cause, the USPTO Director shall enter an order revoking the
individual's registration or limited recognition. Otherwise, the USPTO
Director shall enter an appropriate order dismissing the notice to show
cause. An oral hearing will not be granted unless so ordered by the
USPTO Director, upon a finding that such hearing is necessary. Any
request for reconsideration of the USPTO Director's decision must be
filed within 20 days after the date such decision is rendered by the
USPTO Director. Nothing herein shall permit an individual to seek a
stay of the revocation during the pendency of any review of the USPTO
Director's final decision.
0
12. Amend Sec. 11.18 by revising paragraph (c)(2) to read as follows:
Sec. 11.18 Signature and certificate for correspondence filed in the
Office.
* * * * *
(c) * * *
(2) Referring a practitioner's conduct to the Director of the
Office of Enrollment and Discipline for appropriate action;
* * * * *
0
13. Amend Sec. 11.19 by revising the section heading and paragraphs
(a), (b)(1)(ii), and (c), and by adding paragraph (e), to read as
follows:
Sec. 11.19 Disciplinary jurisdiction; grounds for discipline and for
transfer to disability inactive status.
(a) Disciplinary jurisdiction. All practitioners engaged in
practice before the Office; all practitioners administratively
suspended under Sec. 11.11; all practitioners registered or recognized
to practice before the Office in patent matters; all practitioners
resigned, inactivated, or in emeritus status under Sec. 11.11; all
practitioners authorized under Sec. Sec. 41.5(a) or 42.10(c); and all
practitioners transferred to disability inactive status or publicly
disciplined by a duly constituted authority are subject to the
disciplinary jurisdiction of the Office and subject to being
transferred to disability inactive
[[Page 45824]]
status. A non-practitioner is also subject to the disciplinary
authority of the Office if the person engages in or offers to engage in
practice before the Office without proper authority.
(b) * * *
(1) * * *
(ii) Discipline on ethical or professional misconduct grounds
imposed in another jurisdiction or disciplinary disqualification from
participating in or appearing before any Federal program or agency;
* * * * *
(c) Petitions to disqualify a practitioner in ex parte or inter
partes matters in the Office are not governed by this subpart and will
be handled on a case-by-case basis under such conditions as the USPTO
Director deems appropriate.
* * * * *
(e) The OED Director has the discretion to choose any of the
independent grounds of discipline under paragraph (b) of this section
and to pursue any of the procedures set forth in this subpart in every
disciplinary proceeding.
0
14. Amend Sec. 11.20 by revising paragraphs (a)(4) and (c) to read as
follows:
Sec. 11.20 Disciplinary sanctions; Transfer to disability inactive
status.
(a) * * *
(4) Probation. Probation may be imposed in lieu of or in addition
to any other disciplinary sanction. The conditions of probation shall
be stated in the order imposing probation. Violation of any condition
of probation shall be cause for imposition of the disciplinary
sanction. Imposition of the disciplinary sanction predicated upon
violation of probation shall occur only after a notice to show cause
why the disciplinary sanction should not be imposed is resolved
adversely to the practitioner.
* * * * *
(c) Transfer to disability inactive status. As set forth in Sec.
11.29, the USPTO Director, after notice and opportunity for a hearing,
may transfer a practitioner to disability inactive status where grounds
exist to believe the practitioner has been transferred to disability
inactive status in another jurisdiction, has been judicially declared
incompetent, has been judicially ordered to be involuntarily committed
after a hearing on the grounds of incompetency or disability, or has
been placed by court order under guardianship or conservatorship.
0
15. Revise Sec. 11.21 to read as follows:
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 statement of facts and identify the USPTO
Rules of Professional Conduct relevant to the facts.
0
16. Amend Sec. 11.22 by adding paragraph (c) and by revising
paragraphs (g) and (h) to read as follows:
Sec. 11.22 Disciplinary investigations.
* * * * *
(c) Notice to the OED Director. Within 30 days of being (1)
publicly disciplined as specified in Sec. 11.24; (2) disciplinarily
disqualified from participating in or appearing before any Federal
program or agency as specified in Sec. 11.24; (3) convicted of a crime
in a court of the United States, any State, or a foreign country as
specified in Sec. 11.25; or (4) transferred to disability inactive
status in another jurisdiction as specified in Sec. 11.29, a
practitioner subject to the disciplinary jurisdiction of the Office
shall notify the OED Director in writing of the same. Upon receiving
such notification, the OED Director shall obtain a certified copy of
the record or order regarding such discipline, disqualification,
conviction, or transfer. A certified copy of the record or order
regarding the discipline, disqualification, conviction, or transfer
shall be clear and convincing evidence that the practitioner has been
disciplined, disqualified, convicted of a crime, or transferred to
disability status by another jurisdiction.
* * * * *
(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
Sec. 11.23(b) concerning such practitioner.
(h) Disposition of investigation. Upon the conclusion of an
investigation, the OED Director may take appropriate action, including
but not limited to:
(1) Closing the investigation without issuing a warning or taking
disciplinary action;
(2) Issuing a warning to the practitioner;
(3) Instituting formal charges upon the approval of the Committee
on Discipline; or
(4) Entering into a settlement agreement with the practitioner and
submitting the same for approval of the USPTO Director.
* * * * *
0
17. Amend Sec. 11.24 by revising paragraph (a), the introductory text
to paragraph (b), the introductory text to paragraph (d)(1), and
paragraph (e) to read as follows:
Sec. 11.24 Reciprocal discipline.
(a) Notice to the OED Director. Within 30 days of being publicly
censured, publicly reprimanded, subjected to probation, disbarred or
suspended by another jurisdiction, or 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 discipline or 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 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. A certified copy of the
record or order regarding the discipline shall establish a prima facie
case by clear and convincing evidence that the practitioner has been
publicly censured, publicly reprimanded, subjected to probation,
disbarred, suspended, or disciplinarily disqualified by another
jurisdiction. In addition to the actions identified in Sec. 11.22(h)
and (i), the OED Director may, 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 may 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 the
complaint and request for notice and order, the USPTO Director shall
issue a notice directed to the practitioner in accordance with Sec.
11.35 and to the OED Director containing:
* * * * *
(d) * * *
(1) The USPTO Director shall hear the matter on the documentary
record
[[Page 45825]]
unless the USPTO Director determines that an oral hearing is necessary.
The USPTO Director may order the OED Director or the practitioner to
supplement the record with further information or argument. After
expiration of the period specified in paragraph (b)(3) of this section,
the USPTO Director shall consider the record and shall impose the
identical public censure, public reprimand, probation, disbarment,
suspension, or disciplinary disqualification unless the practitioner
demonstrates by clear and convincing evidence, and the USPTO Director
finds there is a genuine issue of material fact that:
* * * * *
(e) Adjudication in another jurisdiction or Federal agency or
program. In all other respects, a final adjudication, regardless of the
evidentiary standard, in another jurisdiction or Federal agency or
program that a practitioner, whether or not admitted in that
jurisdiction, has committed misconduct shall establish a prima facie
case by clear and convincing evidence that the practitioner has engaged
in misconduct under Sec. 11.804(h).
* * * * *
0
18. Amend Sec. 11.25 by:
0
a. Revising paragraph (a),
0
b. Revising the introductory text of paragraph (b)(2), and
0
c. Revising paragraphs (b)(3) and (e)(2).
The revisions read as follows:
Sec. 11.25 Interim suspension and discipline based upon conviction of
committing a serious crime.
(a) Notice to the OED Director. 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 30 days
from the date of such conviction. Notwithstanding the preceding
sentence, a practitioner is not required to notify the OED Director of
a traffic offense that did not involve the use of alcohol or a
controlled substance, did not result in a fine in excess of $300, and
did not result in the imposition of any other punishment. 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 may 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 may, 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 conviction of
a serious crime. If the crime is not a serious crime, the OED Director
may process the matter in the same manner as any other information or
evidence of a possible violation of any USPTO Rule of Professional
Conduct coming to the attention of the OED Director.
(b) * * *
(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 issue a notice directed to
the practitioner in accordance with Sec. 11.35, and to the OED
Director, containing:
* * * * *
(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 by clear and convincing evidence 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. The USPTO
Director may order the OED Director or the practitioner to supplement
the record with further information or argument. If the USPTO Director
determines that there is no genuine issue of material fact, the USPTO
Director shall enter an appropriate final order regarding the OED
Director's request for interim suspension regardless of the 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.
* * * * *
(e) * * *
(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 the
conditions set forth in Sec. 11.60 no earlier than after completion of
service of his or her sentence, or after completion of service under
probation or parole, whichever is later.
* * * * *
0
19. Revise Sec. 11.26 to read as follows:
Sec. 11.26 Settlement.
A settlement conference may occur between the OED Director and a
practitioner at any time after the initiation of an investigation.
Evidence shall not be excludable on the grounds that such evidence was
presented or discussed in a settlement conference. However, any offers
of compromise and any statements about settlement made during the
course of the settlement conference shall not be admissible in a
disciplinary proceeding. 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.
0
20. Amend Sec. 11.27 by revising paragraph (b) and by removing and
reserving paragraph (c) to read as follows:
Sec. 11.27 Exclusion on consent.
* * * * *
(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. The USPTO
Director may order the OED Director or the practitioner to supplement
the record with further information or argument. The OED Director may
also file comments in response to the affidavit. If the affidavit is
approved, 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) [Reserved]
* * * * *
0
21. Amend Sec. 11.28 by revising paragraphs (a)(1), (a)(1)(i)(D) and
(E), and (a)(2) to read as follows:
Sec. 11.28 Incapacitated practitioners in a disciplinary proceeding.
(a) * * *
(1) Practitioner's motion. In the course of a disciplinary
proceeding under Sec. 11.32, the practitioner may file a
[[Page 45826]]
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) * * *
(D) Written consent by the practitioner to be transferred to
disability inactive status if the motion is granted; and
(E) Written agreement by the practitioner not to practice before
the Office in patent, trademark, or other non-patent matters while in
disability inactive status.
* * * * *
(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 in 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 (d) of this section. A practitioner
in disability inactive status must obtain permission from the OED
Director to engage in paralegal activity permitted under Sec.
11.58(h). Permission will be granted only if the practitioner has
complied with all the conditions of Sec. 11.58 applicable to
disability inactive status. In the event that permission is granted,
the practitioner shall fully comply with the provisions of Sec.
11.58(h).
* * * * *
0
22. Amend Sec. 11.29 by revising paragraphs (a), (b), (d), (g), and
(i) to read as follows:
Sec. 11.29 Reciprocal transfer or initial transfer to disability
inactive status.
(a) Notice to the OED Director. (1) Transfer to disability inactive
status in another jurisdiction as grounds for reciprocal transfer by
the Office. Within 30 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 Office has
been transferred to disability inactive status in another jurisdiction,
the OED Director shall obtain a certified copy of the order. If the OED
Director finds that transfer to disability inactive status is
appropriate, 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 30 days of being
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 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. If the OED Director finds that transfer to
disability inactive status is appropriate, 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 40 days from the date of
the notice, establishing by clear and convincing evidence a genuine
issue of material fact supported by an affidavit and predicated upon
the grounds set forth in paragraphs (d)(1)(i) through (d)(1)(iv) of
this section that a transfer to disability inactive status would be
unwarranted and the reasons therefor.
* * * * *
(d) Transfer to disability inactive status. (1) 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. The USPTO Director may order the OED
Director or the practitioner to supplement the record with further
information or argument. After expiration of the period specified in
paragraph (b)(3) of this section, and after completion of any
supplemental hearings, 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, and the USPTO Director finds there is a genuine
issue of material fact that:
(i) The procedure 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 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;
[[Page 45827]]
(iii) The imposition of the same disability status or transfer to
disability status by the USPTO Director would result in grave
injustice; or
(iv) 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.
(2) 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)(i) through (d)(1)(iv) 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.
* * * * *
(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 this section and
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.
* * * * *
(i) Employment of practitioners on disability inactive status. A
practitioner in disability inactive status must obtain permission from
the OED Director to engage in paralegal activity permitted under Sec.
11.58(h). Permission will be granted only if the practitioner has
complied with all the conditions of Sec. 11.58 applicable to
disability inactive status. In the event that permission is granted,
the practitioner shall fully comply with the provisions of Sec.
11.58(h).
* * * * *
0
23. Amend Sec. 11.34 by revising paragraph (c) to read as follows:
Sec. 11.34 Complaint.
* * * * *
(c) The complaint shall be filed in the manner prescribed by the
USPTO Director. The term ``filed'' means the delivery, mailing, or
electronic transmission of a document to a hearing officer or designee
in connection with a disciplinary complaint or related matter.
* * * * *
0
24. Revise Sec. 11.35 to read as follows:
Sec. 11.35 Service of complaint.
(a) A complaint may be served on a respondent by any of the
following methods:
(1) By delivering a copy of the complaint personally to the
respondent, in which case the individual who delivers 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 Priority Mail
Express[supreg], first-class mail, or any delivery service that
provides confirmation of 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 not registered 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 the 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 not registered 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 the Official Gazette for two
consecutive weeks, in which case the time for filing an answer shall be
30 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 Sec. 11.36(d), 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 may 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.
0
25. Amend Sec. 11.39 by revising the section heading and paragraphs
(a), (b), and (f) to read as follows:
Sec. 11.39 Hearing officer; responsibilities; review of interlocutory
orders; stays.
(a) Designation. A hearing officer designated by the USPTO Director
shall conduct disciplinary proceedings as provided by this part.
(b) Independence of the hearing officer. (1) A hearing officer
designated 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 designated 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 designated 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 designated in accordance with paragraph (a)
of this section shall be either an administrative law judge appointed
under 5 U.S.C. 3105 or an attorney designated under 35 U.S.C. 32. The
hearing officer shall possess suitable experience and training in
conducting hearings, reaching a determination, and rendering an initial
decision in an equitable manner.
* * * * *
(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 (e)(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.
* * * * *
0
26. Amend Sec. 11.40 by revising paragraph (b) and by adding paragraph
(c) to read as follows:
Sec. 11.40 Representative for OED Director or respondent.
* * * * *
(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
[[Page 45828]]
individual designated by the USPTO Director to decide disciplinary
matters regarding the proceeding.
(c) 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.
0
27. Amend Sec. 11.41 by revising paragraph (a) to read as follows:
Sec. 11.41 Filing of papers.
(a) The provisions of Sec. Sec. 1.8 and 2.197 of this chapter 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. The term ``filed'' means the
delivery, mailing, or electronic transmission of a document to a
hearing officer or designee in connection with a disciplinary complaint
or related matter.
* * * * *
0
28. Revise Sec. 11.43 to read as follows:
Sec. 11.43 Motions before a hearing officer.
Motions, including all prehearing motions commonly filed under the
Federal Rules of Civil Procedure, shall be served on the opposing party
and filed with the hearing officer. Each motion shall be accompanied by
a written memorandum setting forth a concise statement of the facts and
supporting reasons, along with a citation of the authorities upon which
the movant relies. Unless extended by the tribunal for good cause, an
opposing party shall serve and file a memorandum in response to the
motion within 21 days of the date of service of the motion, and the
moving party may file a reply memorandum within 14 days after service
of the opposing party's responsive memorandum. All memoranda shall be
double-spaced and written in 12-point font unless otherwise ordered by
the hearing officer. Every motion must include a statement that the
moving party or attorney for the moving party has conferred with the
opposing party or attorney for the opposing party in a good-faith
effort to resolve the issues raised by the motion and whether the
motion is opposed. 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.
0
29. Amend Sec. 11.44 by revising paragraphs (a) and (b) to read as
follows:
Sec. 11.44 Hearings.
(a) The hearing officer shall preside over hearings in disciplinary
proceedings. After the time for filing an answer has elapsed, 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 issued by the hearing
officer, the hearing officer may deem the respondent to have waived the
opportunity for a hearing and may proceed with the hearing in the
absence of the respondent. Where the respondent does not appear, the
hearing officer may strike the answer or any other pleading, deem the
respondent to have admitted the facts as alleged in the complaint,
receive evidence in aggravation or mitigation, enter a default
judgment, and/or enter an initial decision imposing discipline on the
respondent.
* * * * *
0
30. Amend Sec. 11.50 by revising paragraph (a) to read as follows:
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, speculative, or unduly repetitious.
* * * * *
0
31. Revise Sec. 11.51 to read as follows:
Sec. 11.51 Depositions.
(a) Depositions for use at the hearing in lieu of the personal
appearance of a witness before the hearing officer may be taken by the
respondent or the OED Director (i) by agreement or (ii) upon a showing
of good cause and with the approval of, and under such conditions as
may be deemed appropriate by, the hearing officer. If a motion to take
a deposition is granted, the hearing officer shall authorize a subpoena
to be issued pursuant to 35 U.S.C. 24. If the deponent is a USPTO
employee, the respondent shall comply with the requirements of part 104
of this chapter.
(b) A party seeking a deposition shall give reasonable notice of
not less than 14 days unless a shorter period is agreed upon by the
parties or authorized by the hearing officer. The notice shall state
the date, time, and place of the deposition.
(c) Depositions may be taken upon oral or written questions before
any officer authorized to administer an oath or affirmation in the
place where the deposition is to be taken. Deposition expenses shall be
borne by the party at whose instance the deposition is taken.
(d) 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 Priority Mail Express[supreg] not less than five days before
the date of the taking of the deposition unless the parties mutually
agree otherwise.
(e) Testimony by deposition may be recorded by audiovisual means
provided that:
(1) the notice of deposition states that the method of recording is
audiovisual, and
(2) a written transcript of the deposition is prepared by a court
reporter who was present at the deposition and recorded the testimony.
(f) A party on whose behalf a deposition is taken shall file with
the hearing officer a copy of a transcript of the deposition signed by
a court reporter and a copy of any audiovisual recording and shall
serve one copy of the transcript and any audiovisual recording upon the
opposing party.
(g) Depositions may not be taken to obtain discovery, except as
provided for in paragraph (h) of this section.
(h) When the OED Director and the respondent agree in writing, a
discovery 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 into evidence before
the hearing officer unless he or she orders the deposition admitted
into 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
[[Page 45829]]
fact that demeanor is involved and that the witness should have been
called to appear personally before the hearing officer.
0
32. Revise Sec. 11.52 to read as follows:
Sec. 11.52 Written discovery.
(a) After an answer is filed under Sec. 11.36, a party may seek
written discovery of only relevant evidence. The party seeking written
discovery shall file a motion under Sec. 11.43 explaining 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.
The motion shall include a copy of the proposed written discovery
requests. Any response shall include specific objections to each
request, if any. Any objection not raised in the response will be
deemed to have been waived.
(b) If the hearing officer concludes that the proposed written
discovery is reasonable and relevant, the hearing officer, under such
conditions as he or she deems appropriate, may order an opposing party,
within 30 days, or longer if so ordered by the hearing officer, to:
(1) Answer a reasonable number of requests for admission, including
requests for admission as to the genuineness of documents;
(2) Answer a reasonable number of interrogatories;
(3) Produce for inspection and copying a reasonable number of
documents; and
(4) Produce for inspection a reasonable number of things other than
documents.
(c) Discovery shall not be authorized under paragraph (a) of this
section of any matter that:
(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 before the Office;
(4) Relates to experts;
(5) Is privileged; or
(6) Relates to mental impressions, conclusions, opinions, or legal
theories of any attorney or other representative of a party.
(d) 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.
(e) A request for admission will be deemed admitted if the party to
whom the request is directed fails to respond or object to the request
within the time allowed.
(f) 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,
(iii) A complete statement of all opinions to which the expert is
expected to testify and the basis and reasons for them, and
(iv) A description of all facts or data considered by the expert in
forming the opinions; and
(4) Copies of memoranda reflecting the respondent's own statements
to administrative representatives.
0
33. Revise Sec. 11.53 to read as follows:
Sec. 11.53 Proposed findings and conclusions; post-hearing
memorandum.
(a) Except in cases in which the respondent has failed to answer
the complaint or the amended complaint, or appear at a hearing, 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.
(b) The OED Director shall serve and file a post-hearing memorandum
within 30 days after the hearing transcript has been filed with the
hearing officer. The respondent shall have 30 days after service of the
OED Director's post-hearing memorandum to file a responsive post-
hearing memorandum. The OED Director may file a reply memorandum within
21 days after service of any responsive post-hearing memorandum.
(c) The respondent shall serve and file a post-hearing memorandum
with respect to any asserted affirmative defenses, or other matters for
which the respondent bears the burden of proof, within 30 days after
the hearing transcript has been filed with the hearing officer. The OED
Director shall have 30 days after service of the respondent's post-
hearing memorandum to file a responsive post-hearing memorandum. The
respondent may file a reply memorandum within 21 days after service of
any responsive post-hearing memorandum.
(d) The OED Director's and the respondent's responsive post-hearing
memoranda shall be limited to 50 pages, 12-point font, double-spacing,
and one-inch margins, and the reply memoranda shall be limited to 25
pages, 12-point font, double-spacing, and one-inch margins, unless
otherwise ordered by the hearing officer.
(e) The hearing officer may extend the time for filing a post-
hearing memorandum and may also increase the page limits, for good
cause shown.
0
34. Revise Sec. 11.54 to read as follows:
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 reasons or bases for those findings and conclusions with
specific 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, of probation, or an order dismissing the
complaint. The order also may impose any conditions deemed appropriate
under the circumstances.
(b) The initial decision of the hearing officer shall explain the
reason for any default judgment, reprimand, suspension, exclusion, or
probation and shall explain any conditions imposed with discipline. In
determining any sanction, the following four factors shall be
considered if they are applicable:
(1) Whether the practitioner has violated a duty owed to a client,
the public, the legal system, or 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.
(c) The hearing officer shall transmit a copy of the initial
decision to the OED Director and to the respondent and shall transmit
the record of the proceeding to the OED Director within 14 days, or as
soon as practicable if thereafter, of the date of the initial decision.
(d) In the absence of an appeal to the USPTO Director, the decision
of the hearing officer will, without further proceedings, become the
final decision of the USPTO Director 30 days from the date of the
decision of the hearing officer.
[[Page 45830]]
0
35. Revise Sec. 11.55 to read as follows:
Sec. 11.55 Appeal to the USPTO Director.
(a) Within 14 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 by filing a notice of appeal. The notice
shall be filed with the General Counsel for the USPTO Director at the
address set forth in Sec. 1.1(a)(3)(iv) of this chapter and served on
the opposing party. If both parties file notices of appeal, the first
to file is deemed the appellant for purposes of this rule. If both file
on the same day, the respondent is deemed the appellant.
(b) Any notice of cross-appeal shall be filed within 14 days after
the date of service of the notice of appeal.
(c) After a notice of appeal is filed, the OED Director shall
transmit the entire record to the USPTO Director and provide a copy to
the respondent.
(d) The appellant's brief shall be filed within 30 days after the
date of service of the record.
(e) Any appellee's brief shall be filed within 30 days after the
date of service of the appellant's brief.
(f) The appellant's and appellee's briefs shall comply with the
Federal Rules of Appellate Procedure 28(a)(2), (3), (5), (10), and
32(a)(4)-(7) unless otherwise ordered by the USPTO Director.
(g) Any reply brief shall be filed within 14 days after the date of
service of the appellee's brief and, unless otherwise ordered by the
USPTO Director, shall comply with Rules 28(c) and 32(a)(4)-(7) of the
Federal Rules of Appellate Procedure.
(h) If a cross-appeal has been filed, the parties shall comply with
Rules 28.1(c), (e), and (f) of the Federal Rules of Appellate Procedure
unless otherwise ordered by the USPTO Director.
(i) References to the record in the briefs must be to the pages of
the certified record.
(j) 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.
(k) The USPTO Director may refuse entry of a nonconforming brief.
(l) The USPTO Director will decide the appeal on the record made
before the hearing officer.
(m) Unless the USPTO Director permits, no further briefs or motions
shall be filed. The USPTO Director may extend the time for filing a
brief upon the granting of a motion accompanied by a supporting
affidavit setting forth good cause warranting the extension.
(n) 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 any earlier by due
diligence.
(o) Motions shall be served on the opposing party and filed with
the USPTO Director. Each motion shall be accompanied by a written
memorandum setting forth a concise statement of the facts and
supporting reasons, along with a citation of the authorities upon which
the movant relies. Unless extended by the USPTO Director for good
cause, within 21 days of the date of service of the motion, an opposing
party shall serve and file a response to the motion, and the moving
party may file a reply within 14 days after service of the opposing
party's responsive memorandum. All memoranda shall comply with Rules
32(a)(4)-(6) of the Federal Rules of Appellate Procedure unless
otherwise ordered by the USPTO Director. Every motion must include a
statement that the moving party or attorney for the moving party has
conferred with the opposing party or attorney for the opposing party in
a good faith effort to resolve the issues raised by the motion and
whether the motion is opposed. If, prior to a decision on the motion,
the parties resolve issues raised by a motion presented to the USPTO
Director, the parties shall promptly notify the USPTO Director.
0
36. Amend Sec. 11.56 by revising paragraph (c) to read as follows:
Sec. 11.56 Decision of the USPTO Director.
* * * * *
(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 20 days from the date of entry of the
decision. The other party may file a response to the request for
reconsideration within 14 days of the filing of the request. No request
for reconsideration or modification shall be granted unless the request
is based on newly discovered evidence or clear 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.
0
37. Revise Sec. 11.57 to read as follows:
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 by a petition filed in accordance with 35
U.S.C. 32. Any such petition shall be filed within 30 days after the
date of the final decision.
(b) The respondent must serve the USPTO Director with the petition.
The respondent must serve the petition in accordance with Rule 4 of the
Federal Rules of Civil Procedure and Sec. 104.2 of this chapter.
(c) 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.
0
38. Revise Sec. 11.58 to read as follows:
Sec. 11.58 Duties of disciplined practitioner or practitioner in
disability inactive status.
(a) Compliance requirements. An excluded or suspended practitioner
will not be automatically reinstated at the end of his or her period of
exclusion or suspension. Unless otherwise ordered by the USPTO
Director, an excluded or suspended practitioner must comply with the
provisions of this section and Sec. 11.60 to be reinstated. A
practitioner transferred to disability inactive status must comply with
the provisions of this section and Sec. 11.29 to be reinstated unless
otherwise ordered by the USPTO Director. Failure to comply with the
provisions of this section may constitute grounds for denying
reinstatement and cause for further action.
(b) Practice prohibitions. Any excluded or suspended practitioner,
or practitioner transferred to disability inactive status, shall:
(1) Not engage in practice before the Office in patent, trademark,
or other non-patent matters;
(2) Not advertise or otherwise hold himself or herself out as
authorized or able to practice before the Office; and
(3) Take all necessary steps to remove any advertisements or other
representations that would reasonably suggest that the practitioner is
authorized or able to practice before the Office.
(c) Thirty-day requirements. Within 30 days after the date of the
order of exclusion, suspension, or transfer to disability inactive
status, an excluded or suspended practitioner, or practitioner
transferred to disability inactive status, shall:
(1) Withdraw from representation in all matters pending before the
Office;
(2) Provide written notice of the order of exclusion, suspension,
or transfer to disability inactive status to all State and
[[Page 45831]]
Federal jurisdictions and administrative agencies to which the
practitioner is admitted to practice;
(3) Provide to all clients having immediate or prospective business
before the Office in patent, trademark, or other non-patent matters:
(i) Written notice of the order of exclusion, suspension, or
transfer to disability inactive status, that calls attention to the
practitioner's lack of authority to act as a practitioner after the
effective date of the order; specifies any urgent dates for the
client's matters; and advises the client to act promptly to seek legal
advice elsewhere if the client is not already represented by another
practitioner;
(ii) Any papers or other property to which the clients are
entitled, or schedule a suitable time and place where the papers and
other property may be obtained, and call attention to any urgency for
obtaining the papers or other property; and
(iii) Any unearned fees for practice before the Office and any
advanced costs not expended;
(4) Provide written notice of the order of exclusion, suspension,
or transfer to disability inactive status to all opposing parties in
matters pending before the Office and provide in the notice a mailing
address for each client of the practitioner who is a party in the
pending matter; and
(5) Serve all notices required by paragraphs (c)(2), (c)(3), and
(c)(4) of this section by certified mail, return receipt requested,
unless the intended recipient is located outside the United States.
Where the intended recipient is located outside the United States, all
notices shall be sent by a delivery service that provides the ability
to confirm delivery or attempted delivery.
(d) Forty-five-day requirements. Within 45 days after the date of
the order of exclusion, suspension, or transfer to disability inactive
status, an excluded or suspended practitioner, or practitioner
transferred to disability inactive status, 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 Sec. 11.116 for withdrawal from representation. Appended to the
affidavit of compliance shall be:
(1) 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;
(2) A schedule showing the location, title, and account number 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;
(3) A schedule describing, and evidence showing, 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;
(4) A list of all State, Federal, and administrative jurisdictions
to which the practitioner is admitted to practice; and
(5) A description of the steps taken to remove any advertisements
or other representations that would reasonably suggest that the
practitioner is authorized to practice patent, trademark, or other non-
patent law before the Office.
(e) Requirement to update correspondence address. 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.
(f) Limited recognition for winding up practice. Unless otherwise
provided by an order of the USPTO Director, an excluded or suspended
practitioner, or practitioner transferred to disability inactive
status, shall not engage in any practice before the Office. The USPTO
Director may grant such a practitioner limited recognition for a period
of no more than 30 days to conclude work on behalf of a client on any
matters pending before the Office. If such work cannot be concluded,
the practitioner shall so advise the client so that the client may make
other arrangements.
(g) Required records. An excluded or suspended practitioner, or
practitioner transferred to disability inactive status, shall retain
copies of all notices sent and maintain records of the various steps
taken under this section. The practitioner shall provide proof of
compliance as a condition precedent to the granting of any petition for
reinstatement.
(h) Aiding another practitioner while suspended or excluded; acting
as a paralegal. An excluded or suspended practitioner, or practitioner
in disability inactive status, may act as a paralegal for a supervising
practitioner or perform other services for the supervising practitioner
that are normally performed by laypersons, provided:
(1) The practitioner is under the direct supervision of the
supervising practitioner;
(2) The practitioner is a salaried employee of:
(i) The supervising practitioner,
(ii) The supervising practitioner's law firm, or
(iii) A client-employer who employs the supervising practitioner as
a salaried employee;
(3) The supervising practitioner assumes full professional
responsibility to any client and the Office for any work performed by
the practitioner for the supervising practitioner; and
(4) The practitioner does not:
(i) Communicate directly in writing, orally, or otherwise with a
client, or prospective client, of the supervising practitioner in
regard to any immediate or prospective business before the Office;
(ii) Render any legal advice or any legal services in regard to any
immediate or prospective business before the Office; or
(iii) Meet in person with, regardless of the presence of the
supervising practitioner:
(A) Any Office employee in connection with the prosecution of any
patent, trademark, or other matter before the Office;
(B) Any client, or prospective client, of the supervising
practitioner, the supervising practitioner's law firm, or the client-
employer of the supervising practitioner regarding immediate or
prospective business before the Office; or
(C) Any witness or potential witness whom the supervising
practitioner, the supervising practitioner's law firm, or the
supervising 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.
(i) Reinstatement after aiding another practitioner while suspended
or excluded. When an excluded or suspended practitioner, or
practitioner transferred to disability inactive status, acts as a
paralegal or performs services under paragraph (h) of this section, the
practitioner shall not thereafter be reinstated to practice before the
Office unless:
(1) The practitioner has filed with the OED Director an affidavit
that:
(i) Explains in detail the precise nature of all paralegal or other
services performed by the practitioner, and
[[Page 45832]]
(ii) Shows by clear and convincing evidence that the practitioner
has complied with the provisions of this section and all USPTO Rules of
Professional Conduct; and
(2) The supervising practitioner has filed with the OED Director a
written statement that:
(i) States that the supervising practitioner has read the affidavit
required by paragraph (i)(1) of this section and that the supervising
practitioner believes every statement in the affidavit to be true, and
(ii) States that the supervising practitioner believes that the
excluded or suspended practitioner, or practitioner transferred to
disability inactive status, has complied with paragraph (h) of this
section.
0
39. Revise Sec. 11.60 to read as follows:
Sec. 11.60 Petition for reinstatement of disciplined practitioner.
(a) Restrictions on practice. An excluded or suspended practitioner
shall not resume the practice of patent, trademark, or other non-patent
matters before the Office until reinstated.
(b) Petition for reinstatement for excluded or suspended
practitioners. An excluded or suspended practitioner shall be eligible
to petition 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 petition for
reinstatement no earlier than five years from the effective date of the
exclusion.
(c) Review of reinstatement petition. An excluded or suspended
practitioner shall file a petition for reinstatement accompanied by the
fee required by Sec. 1.21(a)(10) of this chapter. The petition for
reinstatement shall be filed with the OED Director. A 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. If the excluded or suspended 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 or suspended practitioner seeking
reinstatement shall have the burden of proving, by clear and convincing
evidence, that:
(1) The excluded or suspended practitioner has the good moral
character and reputation, competency, and learning in law required
under Sec. 11.7 for admission;
(2) The resumption of practice before the Office will not be
detrimental to the administration of justice or subversive to the
public interest; and
(3) The practitioner, if suspended, has complied with the
provisions of Sec. 11.58 for the full period of suspension or, if
excluded, has complied with the provisions of Sec. 11.58 for at least
five continuous years.
(d) Petitions for reinstatement--Action by the OED Director
granting reinstatement. (1) If the excluded or suspended 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 that
shall be conditioned on payment of the costs of the disciplinary
proceeding to the extent set forth in paragraphs (d)(2) and (d)(3) of
this section.
(2) Payment of costs of disciplinary proceedings. Prior to
reinstatement to practice under this section, 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 that 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) A practitioner may only be granted relief from an order
assessing costs under this section, whether in whole or in part or by
grant of an extension of time to pay these costs, upon grounds of
hardship, special circumstances, or other good cause at the discretion
of the OED Director.
(e) Petitions for reinstatement--Action by the OED Director denying
reinstatement. If the excluded or suspended practitioner is found unfit
to resume practice before the Office, the OED Director shall first
provide the excluded or suspended practitioner with an opportunity to
show cause in writing why the petition should not be denied. If
unpersuaded by the showing, the OED Director shall deny the petition.
In addition to the reinstatement provisions set forth in this section,
the OED Director may require the excluded or suspended practitioner, in
meeting the requirements of paragraph (c)(1) of this section, to take
and pass the registration examination; attend ethics, substance abuse,
or law practice management courses; and/or take and pass the Multistate
Professional Responsibility Examination.
(f) Right to review. An excluded or suspended practitioner
dissatisfied with a final decision of the OED Director regarding his or
her reinstatement may seek review by the USPTO Director pursuant to
Sec. 11.2(d).
(g) 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.
(h) Reinstatement proceedings open to public. (1) 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 that such practitioner seeks reinstatement and
shall permit the public a reasonable opportunity to comment or submit
evidence regarding such matter.
(2) Up to 90 days prior to the expiration of the period of
suspension or exclusion, a practitioner may file a written notice of
his or her intent to seek reinstatement with the OED Director and may
request that such notice be published. In the absence of such a
request, notice of a petition for reinstatement will be published upon
receipt of such petition.
0
40. Revise Sec. 11.106 to read as follows:
Sec. 11.106 Confidentiality of information.
(a) A practitioner shall not reveal information relating to the
representation of a client unless the client gives informed consent,
the disclosure is impliedly authorized in order to carry out the
representation, the disclosure is permitted by paragraph (b) of this
section, or the disclosure is required by paragraph (c) of this
section.
(b) A practitioner may reveal information relating to the
representation of a client to the extent the practitioner reasonably
believes necessary:
(1) To prevent reasonably certain death or substantial bodily harm;
(2) To prevent the client from engaging in inequitable conduct
before
[[Page 45833]]
the Office or from committing a crime or fraud that is reasonably
certain to result in substantial injury to the financial interests or
property of another and in furtherance of which the client has used or
is using the practitioner's services;
(3) To prevent, mitigate, or rectify substantial injury to the
financial interests or property of another that is reasonably certain
to result or has resulted from the client's commission of a crime,
fraud, or inequitable conduct before the Office in furtherance of which
the client has used the practitioner's services;
(4) To secure legal advice about the practitioner's compliance with
the USPTO Rules of Professional Conduct;
(5) To establish a claim or defense on behalf of the practitioner
in a controversy between the practitioner and the client, to establish
a defense to a criminal charge or civil claim against the practitioner
based upon conduct in which the client was involved, or to respond to
allegations in any proceeding concerning the practitioner's
representation of the client;
(6) To comply with other law or a court order; or
(7) To detect and resolve conflicts of interest arising from the
practitioner's change of employment or from changes in the composition
or ownership of a firm, but only if the revealed information would not
compromise the practitioner-client privilege or otherwise prejudice the
client.
(c) A practitioner shall disclose to the Office information
necessary to comply with applicable duty of disclosure provisions.
(d) A practitioner shall make reasonable efforts to prevent the
inadvertent or unauthorized disclosure of, or unauthorized access to,
information relating to the representation of a client.
0
41. Amend Sec. 11.118 by revising paragraphs (a) and (b) to read as
follows:
Sec. 11.118 Duties to prospective client.
(a) A person who consults with a practitioner about the possibility
of forming a client-practitioner relationship with respect to a matter
is a prospective client.
(b) Even when no client-practitioner relationship ensues, a
practitioner who has learned information from a prospective client
shall not use or reveal that information, except as Sec. 11.109 would
permit with respect to information of a former client.
* * * * *
0
42. Revise Sec. 11.702 to read as follows:
Sec. 11.702 Communications concerning a practitioner's services:
specific rules.
(a) A practitioner may communicate information regarding the
practitioner's services through any medium.
(b) A practitioner shall not compensate, give, or promise anything
of value to a person for recommending the practitioner's services,
except that a practitioner may:
(1) Pay the reasonable costs of advertisements or communications
permitted by this section;
(2) Pay the usual charges of a legal service plan or a not-for-
profit or qualified practitioner referral service;
(3) Pay for a law practice in accordance with Sec. 11.117;
(4) Refer clients to another practitioner or a non-practitioner
professional pursuant to an agreement not otherwise prohibited under
the USPTO Rules of Professional Conduct that provides for the other
person to refer clients or customers to the practitioner, if:
(i) The reciprocal referral agreement is not exclusive, and
(ii) The client is informed of the existence and nature of the
agreement; and
(5) Give nominal gifts as an expression of appreciation that are
neither intended nor reasonably expected to be a form of compensation
for recommending a practitioner's services.
(c) A practitioner shall not state or imply that he or she is
certified as a specialist in a particular field of law, unless:
(1) The practitioner has been certified as a specialist by an
organization that has been approved by an appropriate authority of a
State or that has been accredited by the American Bar Association, and
(2) The name of the certifying organization is clearly identified
in the communication.
(d) Any communication made under this section must include the name
and contact information of at least one practitioner or law firm
responsible for its content.
0
43. Revise Sec. 11.703 to read as follows:
Sec. 11.703 Solicitation of clients.
(a) ``Solicitation'' or ``solicit'' denotes a communication
initiated by or on behalf of a practitioner or law firm that is
directed to a specific person the practitioner knows or reasonably
should know needs legal services in a particular matter and that offers
to provide, or reasonably can be understood as offering to provide,
legal services for that matter.
(b) A practitioner shall not solicit professional employment by
live person-to-person contact when a significant motive for the
practitioner's doing so is the practitioner's or law firm's pecuniary
gain, unless the contact is with a:
(1) Practitioner;
(2) Person who has a family, close personal, or prior business or
professional relationship with the practitioner or law firm; or
(3) Person who routinely uses for business purposes the type of
legal services offered by the practitioner.
(c) A practitioner shall not solicit professional employment even
when not otherwise prohibited by paragraph (b) of this section, if:
(1) The target of solicitation has made known to the practitioner a
desire not to be solicited by the practitioner, or
(2) The solicitation involves coercion, duress, or harassment.
(d) This section does not prohibit communications authorized by law
or ordered by a court or other tribunal.
(e) Notwithstanding the prohibitions in this section, a
practitioner may participate with a prepaid or group legal service plan
operated by an organization not owned or directed by the practitioner
that uses live person-to-person contact to enroll members or sell
subscriptions for the plan from persons who are not known to need legal
services in a particular matter covered by the plan.
0
44. Amend Sec. 11.704 by revising paragraph (e) to read as follows:
Sec. 11.704 Communication of fields of practice and specialization.
* * * * *
(e) Individuals granted limited recognition may use the designation
``Limited Recognition'' but may not hold themselves out as being
registered.
0
45. Amend Sec. 11.804 by revising paragraphs (b) and (h) to read as
follows:
Sec. 11.804 Misconduct.
* * * * *
(b) Commit a criminal act that reflects adversely on the
practitioner's honesty, trustworthiness, or fitness as a practitioner
in other respects, or be convicted of a crime that reflects adversely
on the practitioner's honesty, trustworthiness, or fitness as a
practitioner in other respects;
* * * * *
(h) Be publicly disciplined on ethical or professional misconduct
grounds by any duly constituted authority of:
(1) A State,
(2) The United States, or
(3) A country having disciplinary jurisdiction over the
practitioner; or
* * * * *
[[Page 45834]]
Dated: May 29, 2020.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2020-12210 Filed 7-29-20; 8:45 am]
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