[Federal Register Volume 86, Number 100 (Wednesday, May 26, 2021)]
[Rules and Regulations]
[Pages 28442-28467]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-10528]
[[Page 28441]]
Vol. 86
Wednesday,
No. 100
May 26, 2021
Part II
Department of Commerce
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Patent and Trademark Office
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37 CFR Parts 1 and 11
Changes to Representation of Others Before the United States Patent and
Trademark Office; Final Rule
Federal Register / Vol. 86 , No. 100 / Wednesday, May 26, 2021 /
Rules and Regulations
[[Page 28442]]
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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, Commerce.
ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) amends the Rules of Practice in Patent Cases and the rules
regarding Representation of Others before the United States Patent and
Trademark Office. This rulemaking aligns the USPTO Rules of
Professional Conduct more closely with the American Bar Association
(ABA) Model Rules of Professional Conduct. It also improves 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. It makes non-substantive changes to
improve the readability of various provisions as well.
DATES: This rule is effective June 25, 2021.
FOR FURTHER INFORMATION CONTACT: William R. Covey, Deputy General
Counsel for Enrollment and Discipline and Director of the Office of
Enrollment and Discipline, at 571-272-4097.
SUPPLEMENTARY INFORMATION:
Purpose
35 U.S.C. 2(b)(2)(D) 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.''
37 CFR part 11 contains those regulations that govern the
representation of others before the USPTO, including regulations
relating to the recognition to practice before the USPTO,
investigations and disciplinary proceedings, and the USPTO Rules of
Professional Conduct. 37 CFR part 1 addresses the rules of practice in
patent cases, and most relevantly fees in patent matters. This notice
sets forth amendments to parts 1 and 11 as discussed herein.
Discussion of Rule Changes
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 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
With this rule, the USPTO is amending the USPTO Rules of
Professional Conduct to align them with widely adopted revisions to the
ABA Model Rules of Professional Conduct. 37 CFR 11.106(b) is 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) is 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 is 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 is 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 is 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 is also amending its regulations to facilitate compliance
by the public. As discussed in greater detail in the section titled
``Discussion of Specific Changes in This Rule,'' the amendments to
Sec. Sec. 11.7, 11.9, 11.11, 11.19, 11.51, 11.52, 11.53, 11.54, 11.55,
11.58, and 11.60 are designed to enhance the clarity of these sections.
Also, the reinstatement provisions in Sec. Sec. 11.9(f) and 11.11(f)
have been realigned for registered practitioners and practitioners
granted limited recognition under Sec. 11.9(b). The periods of time in
these sections are either the same as or greater than the applicable
periods previously provided under this part. As such, the new time
periods apply without regard to whether the relevant period had started
to run before or after the effective date of this rule.
In addition, the regulations have been amended to add provisions
addressing the revocation of registration or limited recognition.
Specifically, the USPTO has created a process in Sec. 11.11(g) by
which an individual's registration or limited recognition may be
revoked in limited circumstances.
Finally, the rule improves the registration examination and
application process. Applicants for the registration examination now
have the opportunity to obtain an extension of time in which to
schedule and take the examination. Prior to implementation of this
rule, applicants were required to submit a new application if they were
unable to schedule the examination within the 90-day scheduling window.
Now, they may simply pay a fee of $115 to obtain an extension. This new
fee is implemented by 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, are made throughout the regulations.
These include increasing structural parallelism between similar
provisions, such as Sec. Sec. 11.24 and 11.29; harmonizing the post-
employment restrictions in Sec. 11.10 with those in 18 U.S.C. 207; and
increasing the readability of provisions throughout, including
Sec. Sec. 11.7 and 11.9. They also include 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 have been designed to benefit practitioners by clarifying
and streamlining professional responsibility, obligations, and
procedures.
Proposed Rule: Comments and Responses
The USPTO published a proposed rule on July 30, 2020, at 85 FR
45812, soliciting comments on the proposed amendments to 37 CFR parts 1
and 11. The USPTO received comments from two intellectual property
organizations and four individual commenters representing law firms and
individuals. These comments are publicly available at the Federal
eRulemaking Portal at www.regulations.gov.
The Office received comments both generally supporting and
objecting to
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the revisions to the rules of practice. A majority of the commenters
supported the rule but expressed concerns with specific revisions. A
summary of the comments and the USPTO's responses are provided below.
Comment 1. One commenter urged the USPTO to end all uses of ``hand
signatures.''
Response 1. The USPTO appreciates this suggestion and the public
recognition of the steps already taken by the USPTO to respond to the
extraordinary situation of the COVID-19 outbreak. See 85 FR 17502 (Mar.
30, 2020). The USPTO has published a separate rulemaking that proposes
to eliminate the ``original handwritten signature personally signed in
permanent dark ink'' requirement for certain documents set forth in 37
CFR 1.4(e)(1). See 84 FR 64800 (Nov. 25, 2019). A final rule that
implements those revisions has been under consideration.
Comment 2. Three commenters expressed support for the USPTO's
proposal to implement a mechanism for requesting an extension of time
in which to schedule an examination but urged the USPTO not to impose a
fee for the first use of this service by each applicant. They argued
that it was not appropriate to charge a fee. Moreover, they asserted
that the fee is not commensurate with the actual cost to the Office of
processing the request for extension.
Response 2. The USPTO currently grants applicants a window of at
least 90 days in which to schedule the registration exam with the
testing service, which should be sufficient. Accordingly, there
previously was no provision that expressly allowed extension requests
to be made. Instead, applicants who were not able to schedule the
registration exam within the granted window were required to reapply
and incur the application-related fees again. Nonetheless, this final
rule expressly permits such an extension. We disagree with the comment
that the fee is not commensurate with the actual cost. The extension
process requires coordination with an outside vendor and includes a
number of other administrative steps that carry a cost burden.
Comment 3. Two commenters urged the USPTO to revise its definition
of ``practitioner'' in Sec. 11.1. They asserted that the definition
causes most foreign attorneys to be classified as ``non-
practitioners,'' and thus practitioners who form partnerships with
foreign attorneys and firms could be deemed to violate the prohibitions
in Sec. 11.504 against partnering or sharing fees with non-
practitioners: ``The USPTO's current definition of `practitioner' as
excluding foreign lawyers causes the significant (and presumably
unintended) consequence of thousands of practitioners potentially
violating numerous USPTO Rules [of Professional Conduct] simply by
virtue of the fact that they are part of a law firm (or in-house
corporate legal department) that includes both U.S. and foreign
lawyers.'' The commenters provided a citation to Forming Partnerships
with Foreign Lawyers, ABA Formal Op. 01-423 (2001).
Response 3. This input is appreciated, but the commenters'
suggestion for a further revision to the definition of ``practitioner''
is outside the scope of this rulemaking. However, the USPTO notes that
this suggestion is generally consistent with the Office of Enrollment
and Discipline's (OED) historical application of the USPTO Rules of
Professional Conduct. OED recognizes that registered patent lawyers may
form partnerships or other entities to practice law in which foreign
lawyers are partners or owners, provided the foreign lawyers are
members of a recognized legal profession in the jurisdiction in which
they are licensed and the arrangement complies with the law of
jurisdictions where the firm practices.
Comment 4. Three commenters urged the USPTO not to adopt the
proposed Sec. 11.19(e), which clarifies that the OED Director has
discretion to choose any of the independent grounds of discipline under
paragraph (b), where appropriate. The commenters characterized the
proposed amendment as giving the OED Director ``unfettered discretion''
to choose whether to follow the reciprocal discipline process in Sec.
11.24 or the ordinary disciplinary process of Sec. 11.32. Two of these
commenters also advocated for a policy that would require the USPTO to
seek only identical or ``less severe'' reciprocal discipline in all
cases in which a practitioner has been disciplined by another
jurisdiction.
Response 4. The OED Director possesses the discretion to select a
course of action under subpart C of part 11 appropriate to protect the
public and maintain the integrity of the legal profession. Section
11.19(e) provides additional clarity to practitioners regarding the OED
Director's mandate to protect the public and maintain the integrity of
the legal profession. In the interests of fairness and efficiency, the
USPTO generally pursues reciprocal discipline in response to public
discipline of a practitioner by another jurisdiction. The efficiencies
of adopting the findings of fact and pursuing the discipline imposed by
another jurisdiction are apparent. However, there have been rare
instances in which circumstances have made it inadvisable to pursue
identical reciprocal discipline. One example would be when the OED
Director learns that a practitioner has been disciplined by another
jurisdiction while subsequently learning of additional information of
misconduct unknown to the other jurisdiction. In such a case, the
interests of justice, efficiency, and protection of the public may call
for the USPTO to pursue a Sec. 11.32 proceeding to consolidate into a
single proceeding the other jurisdiction's public discipline, as well
as the additional information known by the OED Director. Conversely,
there may be instances in which identical reciprocal discipline would
be inappropriate. The ABA has noted that the ``imposition of discipline
or disability inactive status in one jurisdiction does not mean that
every other jurisdiction in which the lawyer is admitted must
necessarily impose discipline or disability inactive status.'' Comment
to Rule 22, ABA Model Rules for Disciplinary Enforcement (July 16,
2020). An example might be when diversion would be appropriate under
the USPTO's Diversion Pilot Program but diversion is unavailable under
the jurisdiction that imposed the original discipline. The OED Director
has always sought to exercise discretion in a manner that protects the
public while treating practitioners fairly. For example, the OED
Director already exercises the same discretion in reviewing petitions
for reinstatement under Sec. 11.60. While Sec. 11.60 continues to
authorize the OED Director in every case to require a petitioner to
pass the registration examination (even if the petitioner was not a
registered practitioner), the OED Director has been judicious in
limiting the exercise of this authority to matters in which there is a
relationship between the underlying conduct (or conduct since the
underlying proceeding) and the requirement to pass the registration
examination, such as a lack of competent representation in patent
matters or a lapse in practice in patent matters. As such, the concern
regarding the grant of discretion to the OED Director in Sec. 11.19(e)
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'' does not
appear to be borne out by experience.
Comment 5. One commenter suggested that explicit discretion be
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added to close an investigation or proceeding under Sec. Sec. 11.24,
11.25, 11.27, and 11.29 by settlement or a warning.
Response 5. The USPTO agrees that retaining the flexibility to
close a case with a warning or through settlement is advisable. Section
11.19(e) already addresses this recommendation by clarifying that the
``OED Director has the discretion . . . to pursue any of the procedures
set forth in this subpart in every disciplinary proceeding,''
indicating that the OED Director retains flexibility to issue a warning
under Sec. 11.21, pursue settlement under Sec. 11.26, transfer to
disability inactive status under Sec. 11.29, permit diversion under
the OED Diversion Pilot Program, or otherwise close an investigation
under Sec. 11.22(i). Moreover, Sec. Sec. 11.24, 11.25, and 11.29
further clarify the OED Director's discretion in this regard.
Comment 6. One commenter stated that the proposed Sec. 11.22(c)
would have required reporting certain events that were already required
to be reported in Sec. Sec. 11.24(a), 11.25(a), and 11.29(a)(1). To
avoid redundancy, the commenter suggested removing the first sentence
of proposed Sec. 11.22(c) and amending ``Upon receiving such
notification'' from the second sentence to ``Upon receiving the
notification required by Sec. 11.24(a), Sec. 11.25(a), or Sec.
11.29(a)(1).''
Response 6. The USPTO adopts this suggestion with slight
modification to reference all of Sec. 11.29(a).
Comment 7. One commenter asserted that Sec. Sec. 11.24, 11.25,
11.27, and 11.29 do not provide notice to a practitioner of the
discretion referenced in Sec. 11.19(e).
Response 7. The discretionary language in the rule provides
appropriate notice. The proposed text already included discretionary
language in Sec. Sec. 11.24, 11.25, 11.27, and 11.29.
Comment 8. One commenter suggested that Sec. Sec. 11.24, 11.25,
11.29, and 11.55 be further revised to expressly permit motions to
extend the time to file for good cause.
Response 8. The USPTO declines to adopt this suggestion. Current
practice permitting motions to extend the time to file responses for
good cause will not be affected by this rule. The final rule does not
foreclose petitions to suspend or waive non-statutory deadlines in an
extraordinary situation, when justice requires, by the USPTO Director
pursuant to Sec. 11.3.
Comment 9. One commenter applauded the USPTO's efforts to amend
Sec. 11.25(a) to reduce reporting burdens. However, two commenters
found fault with the USPTO's efforts to both reduce reporting
requirements for minor traffic offenses in Sec. 11.25(a) and ensure
that reporting requirements were uniform for similarly situated
practitioners. The commenters appeared to argue that the $300 threshold
under which reporting would not be required was arbitrary and would
have led to a disparate impact for practitioners in jurisdictions where
fines are especially high.
Response 9. The USPTO adopts Sec. 11.25(a) as proposed and
declines to further revise the final rule. Because this amendment
strictly reduces reporting obligations and imposes no additional
burdens of any sort, the USPTO believes the latter comments to be
unfounded. As amended, the provision eliminates the requirement to
report convictions of all crimes except those not involving the use of
alcohol or a controlled substance, not resulting in a fine in excess of
$300, and not resulting in the imposition of any other punishment. The
USPTO is aware of only one state that classifies all traffic offenses
as misdemeanors or felonies. Prior to this amendment, practitioners
convicted of any traffic offense in that state were required to report
such criminal convictions to the OED Director under Sec. 11.25(a). As
revised, Sec. 11.25(a) now provides a basis for conscientious
practitioners in every state to rest assured that they have complied
with USPTO reporting requirements, sets a uniform standard that uses
USPTO and practitioner resources efficiently, and ensures that the
public is still protected from practitioners who disregard the law.
Comment 10. Three commenters suggested that the second sentence of
Sec. 11.26 be stricken. This sentence said, ``Evidence shall not be
excludable on the grounds that such evidence was presented or discussed
in a settlement conference.'' The commenters argued that this revision
would create a disincentive to enter into settlement negotiations with
the OED Director. They argued that a practitioner would have ``no
motivation to cooperate in settlement negotiations in which his or her
statements could be admitted against him or her.''
Response 10. The USPTO is withdrawing this proposed revision to
Sec. 11.26 as unnecessary. However, the USPTO disagrees with the
commenters' characterization, which appeared to misconstrue the
distinction between ``evidence'' and ``offers of compromise and any
statements about settlement.'' The purpose of the proposed revision was
to provide clearer language to practitioners to reduce attempts to
shield or ``immunize'' otherwise admissible evidence merely by
presenting or discussing such evidence at a settlement conference. It
remains true that otherwise admissible evidence cannot be excluded in a
USPTO disciplinary proceeding on the grounds that such evidence was
presented or discussed in a settlement conference. The proposed rule
continued to assure a practitioner engaged in settlement discussions
with the USPTO that any offers of compromise and any statements about
settlement made during the course of the settlement conference would
not be admissible in a disciplinary proceeding--a provision that was
previously in the rule and still remains.
Comment 11. Two commenters objected to the proposed amendments to
Sec. 11.27 pertaining to exclusion on consent. The commenters
contended that a practitioner's request for exclusion in lieu of a
disciplinary proceeding must be granted. Under this view, the
commenters faulted the amendment for allegedly injecting discretion
into the process. The commenters asserted that this would be contrary
to that of the majority of jurisdictions in the United States and
pointed to the example of Rule 21 of the ABA Model Rules for
Disciplinary Enforcement.
Response 11. The previous version of Sec. 11.27 never required the
USPTO Director to approve every affidavit in support of exclusion on
consent. Unchanged by this final rule is the provision in Sec.
11.27(a)(2) that requires the affidavit's statement of the allegations
of misconduct to be set forth ``to the satisfaction of the OED
Director.'' Also unchanged is the provision in Sec. 11.27(b) that
provides for the USPTO Director's ``review and approval.'' Furthermore,
Rule 21 of the ABA Model Rules for Disciplinary Enforcement, which the
comments referenced, specifically contemplates instances in which
stipulated discipline may not be approved.
Comment 12. One commenter expressed concern about a potential
discrepancy between Sec. Sec. 11.36(c) and 11.49. Section 11.36 refers
to a special matter of defense while Sec. 11.49 refers to an
affirmative defense. The commenter stated that a special matter of
defense is not necessarily coextensive or synonymous with an
affirmative defense.
Response 12. While it may be true that ``[a] `special matter of
defense' is not necessarily coextensive or synonymous with an
`affirmative defense,''' the USPTO does not perceive these provisions
to be in conflict.
Comment 13. One commenter expressed support for the proposed
amendments to Sec. 11.52 to clarify the scope of discovery and
regarding expert witnesses, which were described as
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``track[ing] the Fed. R. Civ. P. requirements and should thus be
familiar to many practitioners.'' Another commenter suggested that the
proposed Sec. 11.52 be further revised to specify express limits on
written discovery and, in particular, suggested limiting admissions,
interrogatories, and documents to be produced to no more than 10 or 15,
including all discrete subparts.
Response 13. The USPTO declines to further revise Sec. 11.52 as
suggested by the commenter. Under both this rule and the previous
version of Sec. 11.52, a hearing officer must determine whether any
proposed discovery is reasonable and relevant. Once this test is met,
the hearing officer must limit discovery to that which is reasonable.
Because the reasonableness of discovery will depend on the facts and
circumstances of the case at hand, the Office believes it would be
inadvisable to restrict the hearing officer's ability to preside over
the case by reducing the flexibility in limiting discovery.
Comment 14. Two commenters expressed general approval for the
proposed revisions to Sec. 11.58 but suggested that Sec. 11.58(c)(5)
be further amended to remove the requirement to serve notices by
``certified mail, return receipt requested,'' asserting concerns as to
both cost and practicality. The commenters argued that because the
nature of virtual practice results in regular changes of physical
address, email would be the most appropriate means of ensuring that
clients receive notices of discipline.
Response 14. The USPTO declines to adopt this suggestion. Signed
physical certificates of delivery remain the best evidence of the
delivery of the notices required by the rule under typical
circumstances. That being said, nothing prevents the use of email to
provide additional notice in appropriate circumstances.
Comment 15. One commenter suggested that the OED Director be
required ``to publish all cases, including those with adverse decisions
against the USPTO (i.e., dismissals)'' and that ``the USPTO make file
histories regarding published Final Orders [sic] available for public
inspection, without charge.''
Response 15. This comment raises an issue that is outside the scope
of this rulemaking, and thus the USPTO declines to adopt this
recommendation at this time. The USPTO is bound by the Privacy Act of
1974, which provides that ``[n]o agency shall disclose any record which
is contained in a system of records by any means of communication to
any person, or to another agency, except pursuant to a written request
by, or with the prior written consent of, the individual to whom the
record pertains [subject to 12 exceptions not relevant here].'' 5
U.S.C. 552a(b).
Comment 16. Two commenters suggested that the USPTO incorporate in
its regulations the ``Comments'' to the ABA Model Rules. The ABA
Comments ``are intended as guides to interpretation, but the text of
each Rule is authoritative.'' ABA Model Rules, Preamble at Comment 21.
The commenters asserted that doing so would help patent agents comply
with the USPTO Rules of Professional Conduct because, as they asserted,
patent agents are unfamiliar with the nature of their ethical
obligations under the USPTO Rules of Professional Conduct. One
commenter further suggested that the Comments to ABA Model Rule 1.1 be
adopted for Sec. 11.101.
Response 16. These comments raise issues that are outside the scope
of this rulemaking, and thus the USPTO declines to adopt this
suggestion at this time. The USPTO reminds practitioners that, among
other sources, ``[a] practitioner also may refer to the Comments and
Annotations to the ABA Model Rules, as amended through August 2012, for
useful information as to how to interpret the equivalent USPTO Rules.''
78 FR 20180.
Comment 17. One commenter urged the USPTO to revise the
registration examination to include a ``requirement that any non-
attorney applicant for registration be able to demonstrate to the
satisfaction of the OED Director at lease [sic] some level of
proficiency in the USPTO's Rules of Professional Conduct.''
Response 17. This comment raises an issue that is outside the scope
of this rulemaking, and thus the USPTO declines to adopt this
recommendation at this time. The content of the registration
examination already includes questions regarding the USPTO Rules of
Professional Conduct. Moreover, all individuals who practice before the
Office are expected to be familiar with, and abide by, all applicable
rules, to include the USPTO Rules of Professional Conduct.
Comment 18. One commenter suggested that the USPTO require patent
agents and practitioners granted limited recognition, but not patent
attorneys, to make an additional objective demonstration of their grasp
of professional ethics beyond the registration exam, such as
successional completion of the Multistate Professional Responsibility
Examination or an ethics course through a law school. This commenter
also suggested that the USPTO impose mandatory continuing legal
education (CLE) requirements on patent practitioners, which would be
considered to be satisfied by patent attorneys already meeting another
jurisdiction's mandatory CLE requirement.
Response 18. This comment raises an issue that is outside the scope
of this rulemaking, and thus the USPTO declines to adopt these
recommendations at this time. Moreover, it is noted that the USPTO
recently revised Sec. 11.11(a) to provide a mechanism for patent
practitioners to be recognized for CLE, including ethics instruction,
that they have taken. See 85 FR 46932, 46992 (Aug. 3, 2020). See also
85 FR 64128 (Oct. 9, 2020) (notice of proposed CLE guidelines).
Comment 19. One commenter expressed support for the proposed
amendment to Sec. 11.106(b) allowing a practitioner to disclose
information for the purpose of detecting and resolving conflicts of
interest. Another commenter suggested further revising proposed Sec.
11.106 to clarify the interaction with the duty of disclosure under
Sec. 1.56.
Response 19. The comments raise issues that are outside the scope
of this rulemaking, and thus the USPTO declines to adopt these
suggestions at this time.
Comment 20. Three commenters suggested that the USPTO revise
Sec. Sec. 11.701, 11.702, and 11.703 to conform with the 2018
amendments to the ABA Model Rules.
Response 20. As an initial matter, the USPTO appreciates the
opportunity to clarify that it is revising Sec. Sec. 11.702 and 11.703
to align with the 2018, not the 2012, amendments to ABA Model Rules 7.2
and 7.3. As to ABA Model Rule 7.1, the 2018 amendments revised only the
comments to the rule, not the text of the rule itself. As such, this
rulemaking revises only Sec. Sec. 11.702 and 11.703. Thus, upon
conclusion of this rulemaking, Sec. Sec. 11.701, 11.702, and 11.703
will conform to the text of Model Rules 7.1, 7.2, and 7.3 after the
2018 ABA amendments.
Comment 21. Three commenters urged the USPTO to eliminate
Sec. Sec. 11.704 and 11.705 on the grounds that the 2018 amendments to
the ABA Model Rules struck the parallel Model Rules 7.4 and 7.5.
Response 21. The USPTO declines to adopt this suggestion at this
time. Many of the provisions of these rules were added to the Comments
to other ABA Model Rules. For example, restrictions formerly found in
ABA Model Rule 7.4 have been moved to the Comments of ABA Model Rule
7.2. Because the USPTO has declined to adopt the
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Comments to the ABA Model Rules for the reasons set forth above, it is
appropriate that Sec. Sec. 11.704 and 11.705 remain in force at this
time.
Comment 22. One commenter urged the USPTO to ``make its pilot
program for disciplinary diversion a permanent part of the USPTO's
rules in subpart [sic] 11.''
Response 22. This comment raises an issue that is outside the scope
of this rulemaking, and thus the USPTO declines to adopt this
suggestion at this time. However, on November 15, 2019, the OED
Diversion Pilot Program was extended for a three-year term (until
November 15, 2022). Extension of the pilot diversion program will
enable the USPTO to gather additional information necessary to evaluate
the diversion criteria and processes currently used to inform a
determination of whether the diversion program should be made
permanent. The USPTO also notes that this rule, by revising Sec.
11.22(h), clarifies that the OED Director may resolve a disciplinary
investigation in a manner that does not exclude diversion.
Changes From Proposed Rule
As discussed in more detail below, the following sections contain
changes from the proposed rule:
Section 11.10 is modified to bring the undertaking in line with the
remaining provisions of the section.
Section 11.11 is updated to reflect intervening changes to
administrative suspension, inactivation, resignation, reinstatement,
and revocation in another rulemaking. See 85 FR 46932 (Aug. 3, 2020).
Section 11.22(c) is changed to reflect improved phrasing as
suggested by a public comment. See Comment and Response 6, above.
The previously proposed changes to Sec. 11.26 are not included in
this final rule. See Comment and Response 10, above.
Discussion of Specific Changes in This Rule
This rule eliminates 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 administers 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.
Under this rule, the USPTO amends 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
saves 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. This fee is significantly less than the existing
application and examination fees that are due from an applicant who
failed to take the registration examination during the test window. The
fee seeks to 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).
Under this rule, the USPTO amends Sec. 1.21(a)(9) to provide a
heading to clarify the nature of the fees listed thereunder.
The rule amends Sec. 11.1 to clarify several definitions and to
correct typographical errors. The terms ``conviction'' and
``convicted'' are revised to correct the spelling of ``nolo
contendere.'' The term ``practitioner'' is revised to eliminate surplus
within the definition. The term ``register'' is 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 is revised to encompass any criminal offense punishable by
death or imprisonment of more than one year. This revision harmonizes
the definition with that found in the U.S. Criminal Code, in
particular, 18 U.S.C. 3559(a). The term ``state'' is revised to reflect
the correct capitalization of ``commonwealth.''
The rule amends Sec. 11.2(b)(2) to eliminate an unnecessary
reference to Sec. 11.7(b). This revision creates no change in
practice.
The rule amends 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 also replace
the term ``accused practitioner'' with ``subject of the
investigation.''
The rule amends Sec. 11.4, currently reserved, to define how time
shall be computed in part 11. The computational method aligns with the
Federal Rules of Civil Procedure.
The rule amends Sec. 11.5(a) by adding a paragraph heading.
The rule amends Sec. 11.5(b) to change the term ``patent cases''
to ``patent matters,'' amends 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 clarifies 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 rule amends Sec. 11.7(b) to eliminate the requirement for
applicants to refile previously submitted documentation after one year.
The provisions regarding retaking the examination are moved from
subparagraph (b)(1)(ii) to (b)(2). Although an applicant may apply to
take the examination an unlimited number of times, subparagraph (b)(2)
provides additional opportunities upon petition for an applicant to
demonstrate preparedness for each attempt after the fifth attempt. This
provision maintains the integrity of the examination and is in line
with the practice of various state bars. The provisions regarding
denial of admission to the examination and notices of incompleteness
are moved from (b)(2) to (b)(3), which is currently reserved.
Under this rule, the USPTO amends Sec. 11.7(d)(3)(i)(B) to change
the term ``patent cases'' to ``patent matters.''
The rule strikes the last sentence of Sec. 11.7(e) to eliminate
conflict with Sec. 11.7(b)(2).
The rule amends 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 character. The amendment also corrects an internal
citation and updates a reference to requests for information and
evidence in enrollment matters.
The rule amends Sec. 11.7 by adding a new paragraph (l) that
clarifies 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.
Under this rule, the USPTO amends Sec. 11.9(a) to improve clarity
and Sec. 11.9(b) to update a cross-reference. The revisions make no
change in practice.
The rule amends Sec. 11.9 by importing the provisions of Sec.
11.7(a) and (b) into new paragraphs (d) and (e) of Sec. 11.9. This
clarifies the application process as it applies to those seeking
limited recognition under Sec. 11.9(b) but makes no substantive
procedural changes.
[[Page 28447]]
The rule amends Sec. 11.9 by adding a new paragraph (f) to clarify
the documentation required to obtain reinstatement of limited
recognition. This revision generally restates the practice currently
set forth in Sec. 11.7(b). It provides that individuals whose limited
recognition has been expired for five years or longer at the time of
application for reinstatement must provide objective evidence that they
continue to possess the necessary legal qualifications to practice in
patent matters before the Office. Retaking and passing the registration
examination is one way to establish such objective evidence.
The rule amends 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 rule amends Sec. 11.10(b)(1) and (2) by striking the phrase
``or assist in any manner the representation of'' in the two instances
in which it appears. The purpose of this revision is to carry out the
USPTO's intent of ensuring that the restrictions of the post-employment
agreement called for by the provision are coextensive with the post-
employment restrictions set forth in 18 U.S.C. 207, a criminal statute.
The rule deletes Sec. 11.10(b)(3), (b)(4), and (c), which
described words and phrases used in 18 U.S.C. 207. No change in
practice is intended by these deletions, as these provisions are
defined in 5 CFR.
The rule deletes Sec. 11.10(d) and (e) because these practice
prohibitions are elsewhere set forth in law and regulation.
Notwithstanding the elimination of Sec. 11.10(d), USPTO employees
remain barred from prosecuting, or aiding in the prosecution of, any
patent or trademark application before the Office by virtue of
conflict-of-interest statutes, such as 18 U.S.C. 203 and 205, as well
as regulations, such as those promulgated by the Office of Government
Ethics in 5 CFR chapter XVI. Similarly, the truism in Sec. 11.10(e)--
that practice before the USPTO by Government employees is subject to
applicable conflict-of-interest laws, regulations, or codes of
professional responsibility--is already set forth in Sec. 11.111.
The rule amends Sec. 11.11 by correcting the capitalization of the
title of the ``OED Director.''
Under this rule, the USPTO amends 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 rule amends 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 rule amends 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 rule amends Sec. 11.11(c) to simplify the process for
requesting reactivation and to replace the term ``roster'' with the
term ``register.''
The rule amends Sec. 11.11(e) to clarify the eligibility
requirements for practitioners who request to resign. These revisions
make no substantive change.
The rule amends 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 are required to submit objective
evidence that they continue to possess the necessary legal
qualifications. Retaking and passing the registration examination is
one way to establish such objective evidence.
Under this rule, the USPTO amends 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 will only be revoked after the issuance of a notice to show
cause and an opportunity to respond. This aligns with the existing
provisions in Sec. Sec. 11.7(j), 11.11(b), 11.20(a)(4), and 11.60(e).
The rule amends Sec. 11.18(c)(2) to set forth the correct title of
the Director of the Office of Enrollment and Discipline.
The rule amends 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, is deleted as surplus. 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 rule amends 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.
Section 11.19(c) is amended to properly cite a subpart of part 11.
The rule amends Sec. 11.19 by adding a new paragraph (e). This
provision clarifies 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.
This rule amends Sec. 11.20(a)(4) to provide that the conditions
of probation shall be stated in the order imposing probation.
The rule amends 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 rule amends 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 allows a level of detail in a statement of
facts appropriate to the particular matter.
The rule amends 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 also clarifies 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 rule amends 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).
Under this rule, the USPTO amends 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 rule amends Sec. 11.24(a) to provide that a certified copy of
the record or order regarding public discipline in another jurisdiction
shall establish a
[[Page 28448]]
prima facie case by clear and convincing evidence that a practitioner
has, in fact, been publicly disciplined by that jurisdiction. In
addition, the provision is amended to clarify that the OED Director is
permitted to exercise discretion in whether to pursue reciprocal
discipline in any given matter.
The rule amends Sec. 11.24(b) to enhance readability. No change in
practice is intended.
The rule amends Sec. 11.24(d)(1) to clarify the USPTO Director's
prerogative to order that a disciplinary record be supplemented with
further information or argument.
The rule amends 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 does not affect the
availability of the defenses specified in Sec. 11.24(d)(1).
Under this rule, the USPTO amends 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 also
now clarifies that the OED Director is permitted to exercise discretion
in whether to pursue discipline in any given matter under this section.
The rule amends 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 rule amends 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 rule amends Sec. 11.27(b) and (c) to clarify procedures for
exclusion on consent. Specifically, the revision allows 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 also removes and
reserves Sec. 11.27(c), in light of the provisions of revised Sec.
11.27(b).
The rule amends 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 rule amends 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 rule amends 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 rule enlarges 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 rule amends Sec. 11.29(d) by revising the heading of the
paragraph. The provision is reorganized and revised to clarify the
USPTO Director's prerogative to order that the record be supplemented
with further information or argument. The revisions to Sec. 11.29(b)
and (d) parallel the organizational structure of Sec. 11.24.
Under this rule, the USPTO amends Sec. 11.29(g) by clarifying that
a practitioner in disability inactive status must comply with both
Sec. Sec. 11.29 and 11.58, and not merely Sec. 11.58. This revision
makes no change in practice and aligns the provision with Sec. 11.58.
The rule amends Sec. 11.29(i) by updating cross-references. The
revisions make no change in practice.
The rule amends 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 rule amends Sec. 11.35(a) to make minor corrections to syntax.
The rule amends 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 permits
the OED Director to serve the respondent, respondent's attorney, or
both.
The rule amends Sec. 11.39(a) to clarify the process by which
hearing officers are designated in disciplinary proceedings. This
amendment does not affect the USPTO Director's authority to designate
administrative law judges to serve as hearing officers. In fact, the
rule specifically amends 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 rule amends Sec. 11.39(f) to correct a cross-reference.
The rule amends Sec. 11.40 by dividing the current paragraph (b)
into two paragraphs to facilitate ease in reading. In all other
respects, the provision remains unchanged.
The USPTO amends 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 rule amends 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. As amended, the section requires
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 revisions also
require that responses to motions be filed within 21 days and served on
the opposing party, and reply memoranda served within 14 days after
service of the opposing party's response. In addition, the memoranda
should be double-spaced and printed in 12-point font, unless otherwise
ordered by the hearing officer.
The USPTO amends Sec. 11.44(a) to allow scheduling of a hearing
only on a date after the time for filing an answer has elapsed.
This rule amends Sec. 11.44(b) to clarify the sanctions a hearing
officer may impose for failure to appear at a disciplinary hearing.
The rule amends Sec. 11.50 to clarify the existing practice of
prohibiting the admission of speculative evidence.
The rule amends Sec. 11.51(a) by revising it and dividing it into
a new Sec. 11.51(a)-(g). The revisions aim to 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 chapter I. The rule also
makes clear that a deposition may be videotaped if desired. The term
``deposition expenses'' replaces 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,
[[Page 28449]]
serving, and filing depositions. This revision does not affect expenses
recoverable under Sec. 11.60(d)(2).
The rule amends Sec. 11.51(b) by redesignating it as Sec.
11.51(h). The revisions to this paragraph make no change to existing
practice.
The rule amends Sec. 11.52 by reorganizing the section to improve
clarity. The revisions 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 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 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 rule amends Sec. 11.53 to specify the timing and other
requirements of post-hearing memoranda, unless otherwise ordered by the
hearing officer. The rule also allows 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 rule amends 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 rule amends 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 is
moved to Sec. 11.54(c). It is also 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, is
moved to Sec. 11.54(d). This section is also amended to remove an
unnecessary reference to default judgments. These revisions do not
alter the result that any decision of a hearing officer, if not
appealed, becomes final without regard to whether the decision results
from default.
The USPTO amends 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 establish a procedure for filing notices
of appeal and provide briefing timelines. Prior to this rule, an
appellant was allowed 30 days to file a brief. This rule now allows 14
days in which to file a notice of appeal and 45 days thereafter in
which to file the appellate brief. The rule also removes the former
paragraph (i), which was duplicative of a similar provision in Sec.
11.54. Finally, the revisions added paragraph (o) that governs motions
practice before the USPTO Director. The procedures in paragraph (o)
generally parallel those in Sec. 11.43.
This rule amends 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 requires that such request be based on newly
discovered evidence or clear error of law or fact.
The rule amends 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
(https://www.vaed.uscourts.gov/sites/vaed/files/LocalRulesEDVA.pdf).
The provision now requires 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.
Under this rule, the USPTO amends Sec. 11.58 by revising,
subdividing, and renumbering the provisions describing the duties of
disciplined practitioners or practitioners on disability inactive
status. The USPTO believes that these revisions will make it easier for
disciplined practitioners to more easily comply with Sec. 11.58. Where
the practitioner believes compliance with the rule would be unduly
cumbersome, a practitioner is permitted to petition for relief. The
revised rule continues 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 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. These revisions to Sec. 11.58 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 revisions strike
references to resigned practitioners. Obligations relating to resigned
practitioners are consolidated in Sec. 11.11(e) and (f)(3).
The rule amends Sec. 11.60 to remove references to resigned
status. Procedures for resignation and reinstatement from a resigned
status are consolidated in Sec. 11.11. For this reason, the USPTO
amends Sec. 11.60(b) and (c) to eliminate references to reinstatement
and Sec. 11.58 compliance requirements for resigned practitioners. The
USPTO also amends the heading of Sec. 11.60 to explicitly reflect that
it applies only to disciplined practitioners. The rule re-designates
the current Sec. 11.60(f) as Sec. 11.60(g) and amends the paragraph
by inserting a new provision that clarifies 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 rule re-designates the current Sec. 11.60(g) as Sec. 11.60(h)
and amends 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 rule amends 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 brings this provision into alignment with the 2012 amendments
to ABA Model Rule 1.6.
The rule amends Sec. 11.106 by adding a new paragraph (d) that
requires 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
brings this provision into alignment with the 2012 amendments to ABA
Model Rule 1.6.
The rule amends Sec. 11.118 to align with a 2012 amendment to ABA
Model Rule 1.18. The ABA amended Model Rule 1.18 to more narrowly
define a
[[Page 28450]]
prospective client as someone who ``consults with'' a lawyer rather
than someone who merely ``discusses'' the possibility of forming a
lawyer-client relationship.
The rule amends Sec. 11.702 to establish standards that, if met,
would qualify practitioners to state they are certified specialists in
particular fields of law. This amendment brings this provision into
alignment with the 2018 amendments to ABA Model Rule 7.2.
Under this rule, the USPTO amends 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 brings this provision
into alignment with the 2018 amendments to ABA Model Rule 7.3.
The rule amends Sec. 11.704(e) to clarify that individuals granted
limited recognition under Sec. 11.9 may not use the designation
``registered.''
The rule amends Sec. 11.804(b) to clarify that being convicted of
a qualifying crime is a form of misconduct.
The rule amends Sec. 11.804(h) to provide that misconduct includes
being 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. Mortg. Bankers Ass'n, 135 S. Ct. 1199, 1204 (2015)
(Interpretive rules ``advise the public of the agency's construction of
the statutes and rules which it administers.'' (citation and internal
quotation marks omitted)); Nat'l Org. of Veterans' Advocates v. Sec'y
of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that
clarifies that interpretation of a statute is interpretive); Bachow
Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (Rules
governing an application process are procedural under the
Administrative Procedure Act.); Inova Alexandria Hosp. v. Shalala, 244
F.3d 342, 350 (4th Cir. 2001) (Rules for handling appeals were
procedural where they did not change the substantive standard for
reviewing claims.).
Accordingly, prior notice and opportunity for public comment for
the changes in this rulemaking were 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 required neither when an agency ``issue[s]
an initial interpretive rule'' nor ``when it amends or repeals that
interpretive rule.''); Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-
37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C.
2(b)(2)(B), 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))). However, the Office chose 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 changes in this
final rule do not have a significant economic impact on a substantial
number of small entities. See 5 U.S.C. 605(b).
The changes in this rule 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; reorganization of paragraph structure
within particular rules; and other changes to improve clarity in the
regulations.
This rule applies to the approximately 47,000 patent practitioners
registered or granted limited recognition to appear 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 rule. However, a large number of the changes in this
rule are not expected to have any impact on otherwise regulated
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
have no impact on otherwise regulated entities.
The USPTO has also changed the rules governing the recognition to
practice before the Office and 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 rule arguably
increases regulatory burden, such burdens are minimal and outweighed by
the benefits provided.
This rule also provides applicants for registration or limited
recognition the ability to request extensions of time to schedule the
registration exam for a fee. This new fee of $115 helps 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. Effective
October 2, 2020, the cost of reapplying for the examination is $320,
exclusive of any nonrefundable fees paid to the commercial testing
service that administers the examination. See 85 FR 46932 (Aug. 3,
2020). The USPTO estimates that this new regulatory flexibility will
save the public at least $102,500. The authorization for this fee is 35
U.S.C. 41(d)(2)(A).
In sum, any requirements resulting from these 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
Executive Order 12866.
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify
[[Page 28451]]
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 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
does not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking does not affect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO
will submit a report containing the final rule and other required
information to the United States Senate, the United States House of
Representatives, and the Comptroller General of the Government
Accountability Office. The changes in this notice 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
notice is not expected to result in a ``major rule'' as defined in 5
U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes set forth 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.
M. National Environmental Policy Act of 1969: This rulemaking does
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.
N. National Technology Transfer and Advancement Act of 1995: 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.
O. Paperwork Reduction Act of 1995: 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 have been submitted to OMB for
approval. The modifications include updating the process under 37 CFR
11.7 and 11.9 for the Form PTO-158, Application for 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 will decrease by 500 responses due to applicants obtaining an
extension rather than reapplying for their registration.
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 amends 37 CFR parts 1 and 11 as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation 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
[[Page 28452]]
introductory text to paragraph (a)(9) to read as follows:
Sec. 1.21 Miscellaneous fees and charges.
* * * * *
(a) * * *
(1) * * *
(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 or register,'' ``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. Transfer Sec. 11.4 from subpart B to subpart A and revise 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), (b)(1) introductory
text, 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
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
[[Page 28453]]
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 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:
[[Page 28454]]
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
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:
[[Page 28455]]
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
42.10(c) of this chapter 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 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 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. Revise Sec. 11.11 to read as follows:
Sec. 11.11 Administrative suspension, inactivation, resignation,
reinstatement, and revocation.
(a) Contact information. (1) A registered practitioner, or person
granted limited recognition under Sec. 11.9(b), must notify the OED
Director of the postal address for their office, at least one and up to
three email addresses where they receive email, and a business
telephone number, as well as every change to each of said addresses and
telephone number within thirty days of the date of the change. A
registered practitioner, or person granted limited recognition under
Sec. 11.9(b), shall, in addition to any notice of change of address
and telephone number filed in individual patent applications,
separately file written notice of the change of address or telephone
number with the OED Director. A registered practitioner, or person
granted limited recognition under Sec. 11.9(b), who is an attorney in
good standing with the bar of the highest court of one or more states
shall provide the OED Director with the identification number
associated with each bar membership. The OED Director shall publish a
list containing the name, postal business addresses, business telephone
number, registration number or limited recognition number, and
registration status as an attorney or agent of each registered
practitioner, or person granted limited recognition under Sec.
11.9(b), recognized to practice before the Office in patent matters.
The OED Director may also publish the continuing legal education
certification status of each registered practitioner, or person granted
limited recognition under Sec. 11.9(b).
(2) Biennially, registered practitioners and persons granted
limited recognition may be required to file a registration statement
with the OED Director for the purpose of ascertaining whether such
practitioner desires to remain in an active status. Any registered
practitioner, or person granted limited recognition under Sec.
11.9(b), failing to file the registration statement or give any
information requested by the OED Director within a time limit specified
shall be subject to administrative suspension under paragraph (b) of
this section.
(3)(i) A registered practitioner, or person granted limited
recognition under Sec. 11.9(b), who has completed, in the past 24
months, five hours of continuing legal education credits in patent law
and practice and one hour of continuing legal education credit in
ethics, may certify such completion to the OED Director.
(ii) A registered practitioner, or person granted limited
recognition under Sec. 11.9(b), may earn up to two of the five hours
of continuing legal education credit in patent law and practice by
providing patent pro bono legal services through the USPTO Patent Pro
Bono Program. One hour of continuing legal education credit in patent
law and practice may be earned for every three hours of patent pro bono
legal service.
(b) Administrative suspension. (1) Whenever it appears that a
registered practitioner, or person granted limited recognition under
Sec. 11.9(b), has failed to comply with paragraph (a)(2) of this
section, the OED Director shall publish and send a notice to the
registered practitioner, or person granted limited recognition,
advising of the noncompliance, the consequence of being
administratively suspended set forth in paragraph (b)(6) of this
section if noncompliance is not timely remedied, and the requirements
for reinstatement under paragraph (f) of this section. The notice shall
be published and sent to the registered practitioner, or person granted
limited recognition, by mail to the last postal address furnished under
paragraph (a) of this section or by email addressed to the last email
address furnished under paragraph (a) of this section. The notice shall
demand compliance and payment of a delinquency fee set forth in Sec.
1.21(a)(9)(i) of this chapter within 60 days after the date of such
notice.
(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
[[Page 28456]]
show cause, the OED Director may withdraw the notice to show cause, and
the practitioner will not be administratively suspended.
(4) [Reserved]
(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) Administrative inactivation. (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 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.
(d) Voluntary inactivation. (1) Any registered practitioner may
voluntarily enter inactive status by filing a request, in writing, that
his or her name be endorsed on the roster as voluntarily inactive. Upon
acceptance of the request, the OED Director shall endorse the name as
voluntarily inactive.
(2) [Reserved]
(3) A registered practitioner who seeks or enters into voluntary
inactive status is subject to investigation and discipline for his or
her conduct prior to, during, or after the period of his or her
inactivation.
(4) [Reserved]
(5) A registered practitioner in voluntary inactive status is
prohibited from practicing before the Office in patent cases while in
voluntary inactive status. A registered practitioner in voluntary
inactive status will be subject to discipline for failing to comply
with the provisions of this paragraph. Upon acceptance of the request
for voluntary inactive status, the practitioner must comply with the
provisions of Sec. 11.116.
(6) Any registered practitioner whose name has been endorsed as
voluntarily inactive pursuant to paragraph (d)(1) of this section and
is not under investigation and not subject to a disciplinary proceeding
may be restored to active status on the register as may be appropriate,
provided that the practitioner files a written request for restoration,
a completed application for registration on a form supplied by the OED
Director furnishing all requested information and material, including
information and material pertaining to the practitioner's moral
character and reputation under Sec. 11.7(a)(2)(i) during the period of
inactivation, a declaration or affidavit attesting to the fact that the
practitioner has read the most recent revisions of the patent laws and
the rules of practice before the Office, and pays the fees set forth in
Sec. 1.21(a)(7)(iii) and (iv) of this subchapter.
(e) Resignation. 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) Administrative reinstatement. (1)(i) Any administratively
suspended registered practitioner, or person granted limited
recognition under Sec. 11.9(b), may be reinstated provided the
practitioner:
(A) Is not the subject of a disciplinary investigation or a party
to a disciplinary proceeding;
(B) Has applied for reinstatement on an application form supplied
by the OED Director;
(C) Has demonstrated good moral character and reputation and
competence in advising and assisting patent applicants in the
presentation and prosecution of their applications before the Office;
(D) Has submitted a declaration or affidavit attesting to the fact
that the practitioner has read the most recent revisions of the patent
laws and the rules of practice before the Office;
(E) Has paid the fees set forth in Sec. 1.21(a)(9)(ii) of this
chapter; and
(F) Has paid all applicable delinquency fees as set forth in Sec.
1.21(a)(9)(i) of this chapter.
(ii) Any administratively suspended registered practitioner, or
person granted limited recognition, who applies for reinstatement more
than five years after the effective date of the administrative
suspension, additionally shall be required to file a petition to the
OED Director requesting reinstatement and providing objective evidence
that they continue to possess the necessary legal qualifications to
render valuable service to patent applicants.
(2)(i) 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:
(A) A completed application for reactivation on a form supplied by
the OED Director;
(B) A data sheet;
[[Page 28457]]
(C) A signed written undertaking required by Sec. 11.10(b); and
(D) The fee set forth in Sec. 1.21(a)(9)(ii) of this chapter.
(ii) 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.
(3)(i) Any registered practitioner who has been endorsed as
resigned pursuant to paragraph (e) of this section may be reinstated on
the register provided the practitioner:
(A) Is not the subject of a disciplinary investigation or a party
to a disciplinary proceeding;
(B) Has applied for reinstatement on an application form supplied
by the OED Director;
(C) Has demonstrated good moral character and reputation and
competence in advising and assisting patent applicants in the
presentation and prosecution of their applications before the Office;
(D) Has submitted a declaration or affidavit attesting to the fact
that the practitioner has read the most recent revisions of the patent
laws and the rules of practice before the Office;
(E) Has paid the fees set forth in Sec. 1.21(a)(9)(ii) of this
chapter; and
(F) Has paid all applicable delinquency fees as set forth in Sec.
1.21(a)(9)(i) of this chapter.
(ii) Any resigned registered practitioner who applies for
reinstatement more than five years after the effective date of the
resignation additionally shall be required to file a petition to the
OED Director requesting reinstatement and providing 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 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. 41.5(a) or 42.10(c) of this
chapter; 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 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
[[Page 28458]]
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. Upon receiving the notification
required by Sec. 11.24(a), 11.25(a), or 11.29(a), 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 paragraphs (a), (b) introductory
text, (d)(1) introductory text, and (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, is 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 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 revising paragraphs (a), (b)(2) introductory
text, (b)(3), and (e)(2) to 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
[[Page 28459]]
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 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. 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
20. Amend Sec. 11.28 by revising paragraphs (a)(1) introductory text,
(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
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
21. 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,
[[Page 28460]]
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 the
Office's duty, accept as final the conclusion on that subject;
(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
22. 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
23. 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
[[Page 28461]]
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
24. 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
25. 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
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
26. 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
27. 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
28. 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
[[Page 28462]]
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
29. 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
30. 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 by agreement; or 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 fact that demeanor is involved and that
the witness should have been called to appear personally before the
hearing officer.
0
31. 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:
[[Page 28463]]
(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
32. 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
33. 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.
0
34. 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
[[Page 28464]]
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
35. 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
36. 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
37. 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 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, with 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,
[[Page 28465]]
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
(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
38. 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
[[Page 28466]]
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
39. 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 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
40. 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
41. 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;
[[Page 28467]]
(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
42. 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
43. 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
44. 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
* * * * *
Andrew Hirshfeld,
Commissioner for Patents, Performing the Functions and Duties of the
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2021-10528 Filed 5-25-21; 8:45 am]
BILLING CODE 3510-16-P