[Federal Register Volume 88, Number 134 (Friday, July 14, 2023)]
[Rules and Regulations]
[Pages 45078-45088]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-14606]



[[Page 45078]]

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 11

[Docket No. PTO-C-2021-0045]
RIN 0651-AD58


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

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Final rule.

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SUMMARY: The U.S. Patent and Trademark Office (USPTO or Office) amends 
the rules of practice in patent cases and the rules regarding the 
representation of others before the USPTO to better protect the public 
and improve compliance with USPTO requirements. This final rule 
formalizes the USPTO's Diversion Pilot Program for patent and trademark 
practitioners whose physical or mental health issues or law practice 
management issues resulted in minor misconduct. Formalizing the Pilot 
Program aligns USPTO disciplinary practice with a majority of states 
and provides practitioners an opportunity to address the root causes of 
such misconduct. In addition, this final rule requires foreign 
attorneys or agents granted reciprocal recognition to practice before 
the USPTO in trademark matters to provide and update their contact and 
licensure status information or have their recognition withdrawn so the 
public will have access to up-to-date information. This final rule also 
defers to a state's attorney licensing authority regarding alternative 
business structures between a practitioner and a non-practitioner to 
reduce the potential for conflicts between the USPTO and the attorney 
licensing authority. Further, this final rule removes a fee required 
when changing one's status from a patent agent to a patent attorney and 
makes minor adjustments to other provisions related to the 
representation of others before the USPTO.

DATES: This rule is effective August 14, 2023.

FOR FURTHER INFORMATION CONTACT: Will Covey, Deputy General Counsel for 
the Office of Enrollment and Discipline (OED) and OED Director, at 571-
272-4097, or [email protected].

SUPPLEMENTARY INFORMATION: 

Purpose

    The USPTO amends 37 CFR parts 1 and 11 to better protect the public 
and improve compliance with the requirements of part 11. 35 U.S.C. 
2(b)(2)(A) and 2(b)(2)(D) provide the USPTO with the authority to 
establish regulations to govern ``the conduct of proceedings in the 
Office'' and ``the recognition and conduct of agents, attorneys, or 
other persons representing applicants or other parties before the 
Office,'' respectively. Title 37 CFR part 11 contains those regulations 
that govern the representation of others before the USPTO, including 
regulations related to the recognition to practice before the USPTO, 
investigations, disciplinary proceedings, and the USPTO Rules of 
Professional Conduct.
    The USPTO formalizes its OED Diversion Pilot Program (Pilot 
Program) initiated in September 2017 for patent and trademark 
practitioners whose physical or mental health issues or law practice 
management issues resulted in minor misconduct. The public has been 
supportive of the Pilot Program. Making the Pilot Program permanent 
will proactively encourage practitioners to address the root causes of 
their misconduct so that they may provide valuable service to the 
public. It aligns the USPTO's disciplinary practice with a majority of 
state attorney disciplinary systems.
    The USPTO also requires foreign attorneys or agents granted 
reciprocal recognition in trademark matters to provide and update their 
contact and licensure status information or have their recognition 
withdrawn in order to provide the public with current information.
    Certain state attorney licensing authorities have begun permitting 
alternative business structures between an attorney and a non-attorney, 
generally consisting of an arrangement where the non-attorney is 
permitted to partner with the attorney in the practice of law, possess 
an ownership interest in a law firm, or otherwise share in legal fees. 
However, such arrangements were previously prohibited by the USPTO 
Rules of Professional Conduct, creating potential conflicts for patent 
and trademark practitioners who are licensed to practice law in those 
states. Therefore, this rule changes the USPTO Rules of Professional 
Conduct so that, hereafter, the USPTO defers to a state's attorney 
licensing authority regarding certain aspects pertaining to the sharing 
of legal fees between a practitioner and a non-practitioner in order to 
reduce the potential for such conflicts.
    Lastly, the USPTO makes revisions to promote efficiency and clarity 
in its regulations, such as to remove a fee required when changing 
one's status from a patent agent to a patent attorney in order to 
encourage more practitioners to update their status; align the rule 
governing the limited recognition of persons ineligible to become 
registered to practice before the Office in patent matters because of 
their immigration status with existing practice; clarify procedures and 
improve efficiencies regarding disciplinary proceedings and appeals; 
and remove a reference to ``emeritus status.''

Formalizing a Diversion Program for Practitioners

    The USPTO amends part 11 to formalize its OED Diversion Pilot 
Program for patent and trademark practitioners whose physical or mental 
health issues or law practice management issues resulted in minor 
misconduct. For example, a practitioner who lacked diligence in a 
matter due to a law practice management issue that resulted in minimal 
impact on their clients and/or the public may wish to consider 
diversion. The program allows those practitioners to avoid formal 
discipline by successfully completing diversion agreements with the OED 
Director. The goal of the program is to help practitioners address the 
root causes of such misconduct and adhere to high standards of ethics 
and professionalism in order to provide valuable service to the public.
    Diversion is intended to be an action that the OED Director may 
take to dispose of a disciplinary investigation. The program is not 
typically available to a practitioner after the filing of a 
disciplinary complaint by the OED Director under 37 CFR 11.34. However, 
in extraordinary circumstances, the OED Director may enter into a 
diversion agreement with an eligible practitioner after a complaint has 
been filed. If diversion is requested after a complaint has been filed, 
the matter will be referred to the OED Director for consideration. The 
terms of any diversion agreement will be determined by the OED Director 
and the practitioner.
    In 2017, the USPTO initiated the OED Diversion Pilot Program for 
patent and trademark practitioners. The USPTO extended the Pilot 
Program until November 15, 2023 or until a formalized program 
superseded the pilot. See Extension of Diversion Pilot Program, 1503 OG 
314 (Oct. 18, 2022). The Pilot Program has enabled practitioners to 
successfully implement specific remedial measures and improve their 
practice, and the USPTO received public comment urging that the Pilot 
Program be incorporated into part 11. See Changes to Representation of 
Others Before the United States Patent and

[[Page 45079]]

Trademark Office, 86 FR 28442, 28446 (May 26, 2021). This final rule 
amends part 11 to formalize the Pilot Program, thus emphasizing the 
USPTO's commitment to wellness within the legal profession and aligning 
the USPTO with the practices of more than 30 attorney disciplinary 
systems in the United States.
    The criteria for participation are set forth at 37 CFR 11.30. The 
criteria address eligibility, completion of the program, and material 
breaches of the diversion agreement. (Any other aspects of diversion 
not fully addressed in Sec.  11.30, such as specific details regarding 
the material breach of an agreement, will be addressed in 
individualized diversion agreements.) Based on the American Bar 
Association Model Rules for Lawyer Disciplinary Enforcement, the 
criteria also draw from experience gained during the administration of 
the Pilot Program. Specifically, the criteria now allow practitioners 
who have been disciplined by another jurisdiction within the past three 
years to participate if the discipline was based on the conduct that 
forms the basis for the OED Director's investigation. For example, 
participation in the USPTO's diversion program may be appropriate in 
cases in which the practitioner was recently publicly disciplined by a 
jurisdiction that does not have a diversion program. See Changes to 
Representation of Others Before the United States Patent and Trademark 
Office, 86 FR 28442, 28443 (May 26, 2021). Additional experience gained 
from the Pilot Program also indicated that eligibility could be 
extended to practitioners evidencing a pattern of similar misconduct if 
the misconduct at issue is minor and related to a chronic physical or 
mental health condition or disease. Under the Pilot Program criteria, 
practitioners recently disciplined by another jurisdiction and 
practitioners evidencing a pattern of similar misconduct were not 
eligible to participate.
    The OED Director may consider all relevant factors when determining 
whether a practitioner meets the criteria. See generally, Model Rules 
of Lawyer Disciplinary Enforcement Rule 11 cmt. (American Bar 
Association, 2002) (``Both mitigating and aggravating factors should 
also be considered. The presence of one or more mitigating factors may 
qualify an otherwise ineligible respondent for the program.'').
    The USPTO believes that the diversion program is a valuable tool 
that will benefit the public by fostering the skills and abilities of 
those individuals who represent others before the USPTO. Additional 
information may be found in a diversion guidance document, available at 
https://www.uspto.gov/sites/default/files/documents/OED-Diversion-Guidance-Document.pdf.

Changes to the Regulation of Foreign Attorneys or Agents Granted 
Reciprocal Recognition in Trademark Matters

    The USPTO amends Sec.  11.14 to ascertain the licensure status and 
contact information of foreign attorneys or agents who are granted 
reciprocal recognition in trademark matters under Sec.  11.14(c)(1). 
The amendments in this final rule provide potential clients with more 
certainty regarding the good standing of a foreign attorney or agent.
    This final rule requires that any foreign attorney or agent granted 
reciprocal recognition in trademark matters under Sec.  11.14(c)(1) 
must provide the OED Director their postal address, at least one and up 
to three email addresses where they receive email, and a business 
telephone number, as well as any change to their postal address, email 
addresses, and business telephone number, within 30 days of the date of 
any change. A foreign attorney or agent granted reciprocal recognition 
under Sec.  11.14(c)(1) must also notify the OED Director of any lapse 
in their authorization to represent clients before the trademark office 
in the country in which they are registered and reside within 30 days 
of the lapse.
    The USPTO also amends the rules of practice so that the OED 
Director may address a letter to any foreign attorney or agent granted 
reciprocal recognition under Sec.  11.14(c)(1) for the purposes of 
ascertaining the validity of the foreign attorney or agent's contact 
information and good standing with the trademark office or other duly 
constituted authority in the country in which they are registered and 
reside (for Canadian trademark agents, the term ``trademark office'' 
shall mean the College of Patent Agents and Trademark Agents with 
respect to matters of practice eligibility in Canada). Any such foreign 
attorney or agent failing to reply and provide any information 
requested by the OED Director within a time limit specified will be 
subject to having their reciprocal recognition withdrawn by the OED 
Director. Withdrawal of recognition by the OED Director does not 
obviate the foreign attorney's or agent's duty to comply with any other 
relevant USPTO rules, such as the requirement to withdraw from pending 
trademark matters.
    Unless good cause is shown, the OED Director shall promptly 
withdraw the reciprocal recognition of foreign attorneys or agents who: 
(1) are no longer eligible to represent others before the trademark 
office of the country upon which reciprocal recognition is based, (2) 
no longer reside in such country, (3) have not provided current contact 
information, or (4) failed to reply to the letter from the OED Director 
within the time limit specified and/or provide any of the information 
requested by the OED Director in that letter. The amended rule requires 
the OED Director to publish a notice of any withdrawal of recognition.
    Lastly, in this final rule the USPTO amends the rules of practice 
so that any foreign attorney or agent whose recognition has been 
withdrawn may reapply for recognition upon submission of a request to 
the OED Director and payment of the application fee in Sec.  
1.21(a)(1)(i), as provided under amended Sec.  11.14(f).

Removal of the Term ``Nonimmigrant Alien'' From Sec.  11.9(b)

    This final rule amends Sec.  11.9(b) in regard to limited 
recognition for individuals who are neither U.S. citizens nor lawful 
permanent residents, but who nevertheless have been granted status and 
the authority to work in the United States by the U.S. Government in 
order to practice before the USPTO in patent matters. Specifically, the 
USPTO removes the term ``nonimmigrant alien'' from Sec.  11.9(b) 
because the term does not include all individuals eligible for limited 
recognition under this provision. For example, the term ``nonimmigrant 
alien'' does not include all individuals who are neither U.S. citizens 
nor lawful permanent residents, but who nevertheless have been granted 
status and the authority to work in the United States by the U.S. 
Government. Rather, the appropriate description for those who may 
qualify for limited recognition includes individuals who: (1) are 
ineligible to become registered under Sec.  11.6 because of their 
immigration status, (2) are authorized by the U.S. Government to be 
employed or trained in the United States to represent a patent 
applicant by preparing or prosecuting a patent application, and (3) 
meet the requirements of paragraphs (d) and (e) of Sec.  11.9. This 
revision results in no change in practice.

Clarification That Limited Recognition Shall Not Be Granted or Extended 
to a Non-U.S. Citizen Residing Outside the United States

    In this final rule, the USPTO amends Sec.  11.9(b) to clarify that 
limited recognition to practice before the USPTO in patent matters for 
individuals who are neither U.S. citizens nor lawful permanent 
residents, but who nevertheless have been granted status and the 
authority to work in the United

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States by the U.S. Government, shall not be granted or extended to non-
U.S. citizens residing outside the United States. This is consistent 
with current practice in which an individual's limited recognition will 
not terminate if the individual has been approved by the U.S. 
Government to temporarily depart from the United States, but will 
terminate when the individual ceases to reside in the United States.

Removal of Fee Required When Changing Status From Patent Agent to 
Patent Attorney

    In this final rule, the USPTO eliminates the $110.00 fee in Sec.  
1.21(a)(2)(iii) that is charged when a registered patent agent changes 
their registration from an agent to an attorney. It is expected that 
the removal of this fee will improve the accuracy of the register of 
patent attorneys and agents by incentivizing patent agents who become 
patent attorneys to promptly update their status in that register.

Arrangements Between Practitioners and Non-Practitioners

    This final rule adds Sec.  11.504(e) to address when a practitioner 
enters into an arrangement to share legal fees with a non-practitioner, 
to form a partnership with a non-practitioner, or to be part of a for-
profit association or corporation owned by a non-practitioner. In the 
event of such arrangement, Sec.  11.504(e) is intended to defer to the 
attorney licensing authority of the State(s) (as defined in Sec.  11.1, 
``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'') that affirmatively regulate(s) such arrangement, in order to 
avoid a conflict between Sec.  11.504(a), (b), and (d)(1) and (2) of 
the USPTO Rules of Professional Conduct and the laws, rules, and 
regulations of the attorney licensing authority of any such State(s). 
It is further intended to treat an attorney subject to the USPTO Rules 
of Professional Conduct and a registered patent agent similarly when 
both participate together in the same such arrangement. No deference to 
an attorney licensing authority of a State is intended when that 
licensing authority has no laws, rules, and regulations that address 
such arrangement or the State does not affirmatively regulate such 
arrangement.
    However, the added flexibility does not obviate the practitioner's 
obligations under any other USPTO rules, including the USPTO Rules of 
Professional Conduct, that may be relevant to such an arrangement. 
Further, this addition does not permit a person who recommends, 
employs, or pays the practitioner to render legal services for another 
to direct or regulate the practitioner's professional judgment in 
rendering such legal services as described in Sec.  11.504(c), nor does 
this addition permit the practitioner to practice with or in the form 
of a professional corporation or association authorized to practice law 
for a profit, if a non-practitioner has the right to direct or control 
the professional judgment of the practitioner as described in Sec.  
11.504(d)(3).

Clarification of Written Memoranda Regarding Motions in Disciplinary 
Proceedings

    In this final rule, the USPTO amends Sec.  11.43 to clarify that, 
while all motions must set forth a basis for the requested relief, 
including a concise statement of the facts and arguments along with a 
citation of the authorities upon which the movant relies, (1) only 
motions for summary judgment and motions to dismiss are required to be 
accompanied by a written memorandum setting forth that basis, and (2) 
the prescribed time periods to file response and reply memoranda 
regarding such motions only apply to motions for summary judgment and 
motions to dismiss. While parties must provide support for all motions, 
limiting memoranda and the specified briefing schedule to motions for 
summary judgment and motions to dismiss promotes the goal of continued 
efficient progress of disciplinary proceedings. Hearing officers retain 
the discretion to order memoranda and set time limits for other types 
of motions and papers.

Clarification That Disciplinary Hearings May Continue To Be Held by 
Videoconference

    This final rule amends Sec.  11.44(a) to clarify that hearings may 
be held by videoconference. The amendment reflects the current practice 
of scheduling and conducting remote hearings. The amendment also 
clarifies that the transcript of the hearing need not be created by a 
stenographer.

Five Days To Serve Discovery Requests After Authorization; 30 Days To 
Respond After Service

    In this final rule, the USPTO amends Sec.  11.52 to improve the 
procedures for written discovery in disciplinary proceedings and to 
order those procedures in a more chronological fashion. Accordingly, 
the contents of paragraphs (a) and (b) are restructured into revised 
paragraphs (a), (b), and (c). Former paragraph (c) is redesignated as 
paragraph (d), and the cross-reference to former paragraph (a) is 
updated. Former paragraphs (d) through (f) are redesignated as 
paragraphs (e) through (g).
    First, under paragraph (a), the amended rule sets forth the types 
of requests for which a party may seek authorization in a motion for 
written discovery. While the previous rule sets forth that information 
in paragraph (b), the amended rule logically sets forth that 
information in paragraph (a) because paragraph (a) pertains to the 
content of the initial motion for written discovery.
    Second, under paragraph (b), the amended rule requires a copy of 
the proposed written discovery requests and a detailed explanation, for 
each request made, of how the discovery sought is reasonable and 
relevant to an issue actually raised in the complaint or the answer. 
Any response to the motion shall include specific objections to each 
request, if any. Any objection not raised in the response will be 
deemed to have been waived.
    Third, under paragraph (c), the amended rule requires the moving 
party to serve a copy of any authorized discovery requests following 
the issuance of an order authorizing discovery within a default 
deadline of five days following the order. This requirement ensures 
that the opposing party promptly receives a copy of the authorized 
requests to which the party must respond. Amended paragraph (c) also 
sets a default deadline of 30 days from the date of service of the 
authorized requests for the opposing party to serve responses. Setting 
the default period to begin on the date of service provides the 
opposing party a predictable and definitive time period for responding 
to authorized discovery requests in circumstances in which the hearing 
officer's order does not specify a different deadline.

Changes to Procedures Regarding Appeals to the USPTO Director

    In this final rule, the USPTO amends Sec.  11.55(m) to remove the 
requirement to submit a supporting affidavit when moving for an 
extension of time to file a brief regarding an appeal of the initial 
decision of a hearing officer and to place the amended requirement to 
file a motion for an extension in a new paragraph (p) at the end of 
Sec.  11.55. Affidavits are removed to eliminate an unnecessarily 
burdensome requirement in requesting the extension of time, while 
retaining the necessity to show good cause. The provision is moved to 
the new paragraph (p) because it logically falls at the end of Sec.  
11.55.

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Removal of Emeritus Status

    The USPTO removes the reference to ``emeritus status'' in Sec.  
11.19(a) because no such status was ever finalized and inadvertently 
remains from a previous rulemaking.

Proposed Rule: Comments and Responses

    The USPTO published a proposed rule on September 8, 2022, at 87 FR 
54930, soliciting comments on the proposed amendments to 37 CFR parts 1 
and 11. The USPTO received five unique comments from four organizations 
and one individual. These comments are publicly available at the 
Federal eRulemaking Portal at www.regulations.gov. The Office received 
comments both generally supporting and objecting to the revisions to 
the rules of practice. A summary of the comments and the USPTO's 
responses are provided below.
    Comment 1. Two commenters support the proposal to formalize the 
USPTO's Diversion Pilot Program. One commenter encourages expanding the 
eligibility criteria for participation and increasing the use of the 
program.
    Response 1. The USPTO appreciates the support for formalizing its 
Diversion Pilot Program. The eligibility criteria for participation in 
the Diversion Program are set forth in 37 CFR 11.30 in this final rule. 
The criteria are based upon the American Bar Association Model Rules 
for Lawyer Disciplinary Enforcement (amended August 12, 2002) and are 
now broadened based on experience gained during the Pilot Program. 
Specifically, eligibility is extended to a practitioner who evidences a 
pattern of similar misconduct if the misconduct at issue is minor and 
related to a chronic physical or mental health condition or disease. 
Eligibility is also extended to a practitioner who has been disciplined 
by another jurisdiction within the past three years as long as the 
discipline was based on the conduct that forms the basis for the OED 
Director's investigation. Under the Pilot Program, a practitioner who 
evidenced a pattern of similar misconduct or a practitioner who was 
recently disciplined by their state bar was not eligible to 
participate. The USPTO believes that the Diversion Program is a 
valuable proactive tool that will provide a practitioner the 
opportunity to curtail future misconduct. Accordingly, the USPTO will 
continue to evaluate the eligibility criteria over the course of the 
program.
    Comment 2. Two commenters express concerns regarding the proposal 
to require a written memorandum of law only for a motion for summary 
judgment or a motion to dismiss. Specifically, the commenters contend 
that the proposal may impact the due process rights of respondents; 
eliminate memoranda of law in other important motions; and impact the 
ability of the respondent (and tribunal) to understand the relevant 
facts, the applicable law, and the application of the law to the facts 
in support of the relief requested. The commenters also express concern 
that no data or objective evidence has been provided in support of a 
benefit to respondents when motions unsupported by a memorandum of law 
are filed against them. The commenters suggest that the USPTO should 
either withdraw the proposal or amend it to permit a motion to be filed 
without a supporting memorandum of law only for narrowly defined, non-
substantive issues.
    Response 2. The USPTO appreciates the comments and, after review 
and consideration, has amended 37 CFR 11.43 to clarify that each motion 
must set forth a basis for the requested relief, including a concise 
statement of the facts and supporting reasons, along with a citation of 
the authorities upon which the movant relies. The amended text requires 
the moving party to advance in their motion any facts and supporting 
reasons deemed necessary to support the requested relief. The USPTO 
notes that the prior provision in 37 CFR 11.43 that required memoranda 
to accompany all motions had only been in place since June 25, 2021. 
Before then there was no requirement that a motion be accompanied by a 
memorandum of law. Instead, the form and content of motions and 
accompanying papers were governed by the hearing officer's orders, 
which typically required all motions to be so accompanied. However, 
respondents who are unrepresented by counsel often failed to file 
memoranda of law with their motions, regardless of the orders. 
Accordingly, the change to Sec.  11.43 may benefit such unrepresented 
respondents who may find preparing a memorandum of law burdensome or 
may overlook the requirement. Nothing in the amended text authorizes or 
endorses the filing of motions that are not adequately supported by 
facts, reasons, and legal authorities. Rather, the amendment removes 
the current requirement that a separate legal memorandum must be filed 
for all motions and limits the requirement to only certain dispositive 
motions.
    Comment 3. One commenter recommends that in developing policies 
regarding the use of video hearings, the USPTO may wish to consult 
Recommendation 2021-4, Virtual Hearings in Agency Adjudication, 86 FR 
36083 (July 8, 2021), which identifies best practices for improving 
existing virtual-hearing programs and establishing new ones in accord 
with principles of fairness and efficiency and with due regard for 
participant satisfaction.
    Response 3. The USPTO appreciates the comment. The USPTO will 
endeavor to ensure that hearing officers and the USPTO's counsel keep 
abreast of recommendations, developments, and updates with respect to 
virtual hearings, including the referenced Recommendation 2021-4, in 
order to promote remote hearings that proceed efficiently, fairly, and 
to the satisfaction of participants.
    Comment 4. Three commenters raise concerns in regard to amended 37 
CFR 11.44(a), pertaining to remote hearings, stating that disciplinary 
proceedings are quasi-criminal in nature and that due process must be 
considered. Two of the commenters particularly assert that respondents 
and their counsel are entitled to, or should be entitled to, an in-
person right to confront witnesses, if so desired.
    Response 4. The USPTO appreciates the comments and endeavors to 
fully protect respondents' due process rights in all disciplinary 
proceedings, whether conducted remotely or in-person. USPTO 
disciplinary proceedings provide respondents with notice of the charges 
against them and opportunities to be heard, explain, and defend 
themselves. See In re Ruffalo, 390 U.S. 544, 550 (1968). Federal courts 
have consistently distinguished the rights of respondents in 
disciplinary cases from those of criminal defendants. See In re Sibley, 
564 F.3d 1335, 1341 (D.C. Cir. 2009); Rosenthal v. Justices of the 
Supreme Court of Cal., 910 F.2d 561, 564 (9th Cir. 1990), cert. denied, 
498 U.S. 1087 (1991); In re Stamps, 173 Fed. App'x. 316, 318 (5th Cir. 
2006) (per curiam) (unpublished); In re Marzocco, No. 98-3960, 1999 WL 
968945, at *1 (6th Cir. 1999) (unpublished). Nonetheless, whether the 
hearing is held in-person or remotely, respondents have the opportunity 
to cross-examine witnesses and have the witnesses' credibility 
evaluated by a neutral hearing officer.
    Comment 5. Two commenters express concerns related to subpoenas 
that may be used in USPTO disciplinary proceedings. The commenters note 
the geographic limitations of Federal Rule of Civil Procedure 45 and 
assert that the ``place'' of hearing for USPTO disciplinary hearings is 
where the hearing officer is located, not where a witness may be 
located in the case of a remote hearing. Therefore, the commenters 
argue that hearing officers

[[Page 45082]]

can only authorize parties to apply to the court in the jurisdiction 
where the trial is held to obtain a hearing subpoena and compel the in-
person appearance of a witness. Accordingly, the commenters assert that 
the proposed amendment in regard to remote hearings incorrectly 
presumes that hearing officers have nationwide hearing subpoena power. 
The commenters add that the only way to ensure testimony by witnesses 
outside the subpoena power of a trial court is to have them testify by 
deposition.
    Response 5. The USPTO disagrees with the sentiments in these 
comments. Although hearing officers do not issue subpoenas, they have 
the power to authorize the issuance of subpoenas by federal district 
courts nationwide pursuant to 35 U.S.C. 24 and 37 CFR 11.38, 11.39, and 
11.51. The legitimacy and enforceability of a subpoena issued to a 
witness in a particular disciplinary proceeding may be determined on a 
case-by-case basis. In addition to authorizing hearing subpoenas, 
hearing officers may authorize subpoenas for remote depositions and 
have done so in the past. There is a benefit to hearing officers 
conducting remote hearings, where they can hear and observe testimony 
in real time and ask questions of the witness, instead of being 
presented with deposition transcripts or videos, where the hearing 
officers have no opportunity to interact with the witness or observe 
the witness in real time.
    Comment 6. Three commenters object to characterizing the amendment 
in regard to remote hearings as a ``clarification'' of existing 
practice. The commenters assert that conducting remote hearings is not 
authorized by the existing rules and that doing the same since the 
beginning of the COVID pandemic does not authorize them or make them 
legitimate. One commenter also noted that members of the public had no 
way to know that hearing officers had been conducting remote hearings 
because disciplinary proceedings are subject to the Privacy Act of 
1974.
    Response 6. The USPTO disagrees with the sentiments in these 
comments. The amendment reflects existing practice. Hearing officers 
have invoked their broad authority under 37 CFR 11.39(c) to conduct 
remote hearings in USPTO disciplinary proceedings. At least one other 
jurisdiction has also recognized this authority. See Atty. Grievance 
Commn. of Maryland v. Agbaje, 93 A.3d 262, 275-76 (Md. 2014). It is 
further noted that the USPTO conducts hearings in proceedings between 
parties where some or all participants appear remotely. For example, 
the Trademark Trial and Appeal Board has held such hearings since 
before the COVID pandemic began, and the Patent Trial and Appeal Board 
has held numerous remote hearings since the advent of the pandemic. 
Regarding notice to the public, the amendment expressly states that a 
virtual hearing is an additional option for the hearing officer. 
Parties may proactively move for or against a virtual hearing. Further, 
the amended provision provides notice to the public that a virtual 
hearing is available, thereby potentially giving the respondent 
additional time in the early stages of a proceeding either to request 
and prepare for a remote hearing or to formulate a request against a 
remote hearing. Nothing in this amendment is intended to preclude or 
restrict a hearing officer's authority to order an in-person hearing.
    Comment 7. Three commenters posit that remote hearings should be 
available only if a respondent elects one or, similarly, that remote 
hearings should be available only if both parties agree.
    Response 7. The USPTO declines to adopt such a limit on a hearing 
officer's discretion to order a remote hearing. The amendment does not 
mandate remote hearings, but rather recognizes that a hearing officer 
may exercise discretion to order a hearing to be remote in whole or in 
part. Hearing officers will need to consider various factors in 
determining whether to conduct a remote hearing in whole or in part, 
including but not limited to the stated preferences and needs of the 
parties. For example, remote hearings may reduce the cost of the 
disciplinary proceeding for the Office and respondent. See generally, 
37 CFR 11.60(d)(1).
    Comment 8. One commenter states that the phrase ``the hearing 
officer shall set the time and place for the hearing'' in 37 CFR 
11.44(a) refers to a physical location, and states that virtual 
hearings depart from this meaning.
    Response 8. To the extent that the commenter appears to suggest 
that the quoted phrase obviates the possibility of remote hearings, the 
USPTO disagrees because amended 37 CFR 11.44(a) explicitly provides for 
remote hearings. Further, hearing officers have invoked their broad 
authority under 37 CFR 11.39(c) to ``determine the time and place of 
any hearing and regulate its course and conduct'' to include conducting 
the hearing via videoconference. In addition, at least one tribunal has 
found that the parties, witnesses, and hearing officers are still 
``located'' at some place during a remote proceeding, just simply not 
all at the same location. See Legaspy v. Fin. Indus. Regul. Auth., 
Inc., No. 20 C 4700, 2020 WL 4696818, at *3 (N.D. Ill. Aug. 13, 2020).
    Comment 9. Three commenters express support for the amendment to 
require reciprocally recognized trademark practitioners to update their 
contact information with the USPTO within 30 days of any changes 
thereto. One commenter expresses a concern, however, that such 
requirement lacks an effective enforcement mechanism. As such, the 
commenter suggests imposing escalating fees for late submissions of 
contact information updates. The commenter posits that the threat of 
penalties would increase compliance with the new rule. Finally, the 
commenter appears to suggest that practitioners who are late in 
providing updated contact information by a full year, should be 
automatically removed from the rolls.
    Response 9. The USPTO declines to impose such new fees at this time 
because the public would not have had a chance to review and comment on 
the proposal. The USPTO also declines to create automatic removal 
provisions because such provisions may implicate the Administrative 
Procedure Act's requirements to provide notice and a hearing before a 
license may be revoked.
    Comment 10. One commenter suggests that the text requiring a 
foreign attorney or agent granted reciprocal recognition in trademark 
matters to provide and update their contact information with the USPTO 
be included under 37 CFR 11.11(a) which currently requires a registered 
patent practitioner and any person granted limited recognition under 37 
CFR 11.9(b) to provide and update their contact information. The 
commenter appears to make the suggestion under the understanding that 
``those who have reciprocal recognition are granted limited 
recognition.''
    Response 10. The USPTO thanks the commenter for the suggestion. 
Assuming the USPTO correctly understands the suggestion, the USPTO 
wishes to clarify there is no overlap between the categories of: (1) 
foreign trademark practitioners who are reciprocally recognized to 
practice before the USPTO in certain trademark matters under 37 CFR 
11.14 as long as they do not reside in the United States, and (2) 
foreigners who reside in the United States and are granted limited 
recognition to practice before the USPTO in patent matters under 37 CFR 
11.9.
    Comment 11. One commenter supports in principle the proposed

[[Page 45083]]

amendment to defer to the laws, rules, and regulations of the attorney 
licensing authority of the State of a practitioner who enters into an 
arrangement to share legal fees with a non-practitioner, form a 
partnership with the non-practitioner, or be part of an organization 
owned by a non-practitioner. However, the commenter believes that the 
USPTO should undertake further study and review of the potential 
outcomes resulting from the amendment, as well as review the efforts of 
the American Bar Association and other jurisdictions as they modify and 
interpret their rules to clarify or reconsider existing positions on 
alternative business arrangements with non-attorneys. Another commenter 
views the sharing of legal fees with non-attorneys as inconsistent with 
the core values of the legal profession but recognizes that some 
jurisdictions now permit such fee-sharing and others may follow. 
Accordingly, the commenter notes that fear of violating the then-
effective rule, which generally prohibited such arrangements, may have 
made practitioners who are admitted to a jurisdiction that permits such 
fee sharing reluctant to enter into the same. Therefore, while the 
commenter appreciates the USPTO's clarity, the commenter suggests that 
the USPTO monitor the use of non-practitioners to make filings, as well 
as the commoditization of legal services by non-practitioner owned 
companies.
    Response 11. The USPTO appreciates these comments as well as the 
concerns identified. The USPTO will continue to consider the potential 
and actual outcomes of the addition of 37 CFR 11.504(e) as well as 
related changes in other jurisdictions. The USPTO notes prior reports 
by Supreme Court of Arizona's Task Force on the Delivery of Legal 
Services in 2019, which preceded that state's elimination of the 
equivalent of 37 CFR 11.504; the State Bar of California Task Force on 
Access through Innovation of Legal Services' Final Report and 
Recommendations in 2020, which appear to have been partially 
implemented; and the Utah Supreme Court's Standing Order No. 15 of 2020 
(as amended in 2021) implementing changes to the equivalent of 37 CFR 
11.504. The USPTO also notes that Georgia has implemented changes very 
similar to this final rule's addition of 37 CFR 11.504(e) in Georgia 
Rule of Professional Conduct 5.4(e) and (f).
    In regard to the second commenter's concern regarding the use of 
non-practitioners to make filings, the USPTO notes that existing 
provisions regarding who may practice before the USPTO, prohibitions 
regarding the unauthorized practice of law before the USPTO, and 
provisions on who may properly present a document to the USPTO remain 
unchanged. In addition to the suggestions of the commenters, the USPTO 
has identified a situation of concern in which a registered patent 
agent (i.e., a non-attorney registered to practice before the Office in 
patent matters) could be in violation of the proposed 11.504(e) even 
though an attorney in the same firm who is also subject to the USPTO 
Rules of Professional Conduct would not be in violation of the same 
provision. As such, the USPTO has simplified proposed 11.504(e) to 
clarify that a practitioner need not also be authorized to practice law 
by the attorney licensing authority in the State(s) that affirmatively 
regulate(s) the arrangement if the arrangement is fully compliant with 
the laws, rules, and regulations of the attorney licensing authority of 
any such State(s).
    Comment 12. One commenter supports the proposal to eliminate the 
fee imposed upon a registered patent practitioner for requesting a 
status change from patent agent to patent attorney. The commenter also 
requests that the USPTO remove fees to convert an individual's status 
from limited recognition to either patent agent or patent attorney 
status, or when a practitioner changes their status from patent 
attorney to patent agent.
    Response 12. The USPTO is unable to consider the removal of 
additional fees in this rulemaking, as further study will be required.

Changes From Proposed Rule

    As discussed in more detail below, the following sections contain 
changes from the proposed rule:
    Section 11.14 is modified after further consideration to clarify 
that a practitioner granted reciprocal recognition under paragraph 
(c)(1) shall notify the OED Director of a lapse in authorization within 
30 days of the lapse, which was previously unspecified in paragraph (g) 
but is a logical outgrowth of the proposed rule. The section is further 
modified to add a header to paragraph (d) in conformity with the other 
paragraphs of that section. Paragraph (h) is further modified to 
clarify that the transmission of the letter to a practitioner 
recognized under paragraph (c)(1) is sufficient rather than receipt. 
This recognizes the challenge of verifying service on a practitioner 
who is definitionally located outside the United States per paragraph 
(c)(1) in light of the duty of the practitioner to be reachable by 
clients and tribunals in accordance with the USPTO disciplinary rules. 
Lastly, after further consideration, references to ``must'' in 
paragraphs (g) and (h) have been changed to ``shall'' for consistency 
with other paragraphs in Sec.  11.14.
    Section 11.43 is modified after further consideration and in 
response to public comment to clarify that each motion must set forth a 
basis for the requested relief, including a concise statement of the 
facts and supporting reasons, along with a citation of the authorities 
upon which the movant relies. This change may benefit unrepresented 
respondents who may find preparing a memorandum of law burdensome. See 
Comment and Response 2.
    Section 11.52(d) is modified to update a cross-reference in the 
proposed rule that unintentionally referred to paragraph (a). The 
cross-reference has been updated to refer to paragraph (c).
    Section 11.504(e) is modified after further consideration and in 
response to public comment to clarify that a practitioner who enters 
into an alternative business arrangement with a non-practitioner need 
not also be authorized to practice law by the attorney licensing 
authority in the State(s) that affirmatively regulate(s) the 
arrangement if the arrangement is fully compliant with the laws, rules, 
and regulations of the attorney licensing authority of any such 
State(s). A registered patent agent and an attorney who participate 
together in the same such arrangement and are both subject to the USPTO 
Rules of Professional Conduct are to be treated similarly in regard to 
Sec.  11.504(a), (b), and (d)(1), and (d)(2) in cases when the attorney 
licensing authority of any such State(s) affirmatively regulate(s) an 
alternative business structure with a non-practitioner. Further, these 
changes clarify that the exception created by Sec.  11.504(e) does not 
apply when the attorney licensing authority of any such State(s) has no 
laws, rules, and regulations that address an alternative business 
structure with a non-attorney, and that the exception does not apply 
when the State does not affirmatively regulate such arrangement. See 
Comment and Response 11.

Discussion of Specific Rules

    The USPTO eliminates the fee in Sec.  1.21(a)(2)(iii) for changing 
one's status from a registered patent agent to a registered patent 
attorney.
    The USPTO amends Sec.  11.7(l) to reflect the elimination of the 
fee set forth in Sec.  1.21(a)(2)(iii).
    The USPTO amends Sec.  11.9(b) to remove the term ``nonimmigrant 
alien'' and to clarify that limited recognition shall not be granted or 
extended to a

[[Page 45084]]

non-U.S. citizen residing outside the United States.
    The USPTO amends Sec.  11.14(c)(1) to remove unnecessary references 
to paragraph (c).
    The USPTO amends Sec.  11.14(d) to add a header in conformity with 
the other paragraphs of that section.
    The USPTO amends Sec.  11.14(f) to add references to Sec.  
11.14(c)(1) where Sec.  11.14(c) was previously referenced.
    The USPTO adds Sec.  11.14(g) to create a requirement for a foreign 
attorney or agent granted reciprocal recognition under Sec.  
11.14(c)(1) to notify the OED Director of updates to contact 
information within 30 days of the date of the change and to notify the 
OED Director of any lapse in their authorization to represent clients 
before the trademark office in the country in which they are registered 
and reside within 30 days of the date of the lapse.
    The USPTO adds Sec.  11.14(h) to ascertain the validity of a 
reciprocally recognized foreign attorney's or agent's contact 
information and good standing with the trademark office or other duly 
constituted authority in the country in which the agent is registered 
and resides. Any foreign attorney or agent failing to give any 
information requested by the OED Director within a time limit specified 
is subject to having their reciprocal recognition withdrawn.
    The USPTO adds Sec.  11.14(i) to create a process to withdraw 
reciprocal recognition of a foreign attorney or agent registered under 
paragraph (c)(1) if they: (1) are no longer registered with, in good 
standing with, or otherwise eligible to practice before, the trademark 
office of the country upon which reciprocal recognition is based; (2) 
no longer reside in such country; or (3) have not provided current 
contact information or have failed to validate their good standing with 
the trademark office in the country in which they are registered and 
reside as required in amended Sec.  11.14(g) and (h).
    The USPTO adds Sec.  11.14(j) to specify that the process for a 
foreign attorney or agent whose recognition has been withdrawn and who 
desires to become reinstated is to reapply for recognition under Sec.  
11.14(f).
    The USPTO amends Sec.  11.19(a) to remove the term ``emeritus 
status.''
    The USPTO amends Sec.  11.22(h)(3) and (4) and adds Sec.  
11.22(h)(5) to state that the OED Director may dispose of an 
investigation by entering into a diversion agreement with a 
practitioner.
    The USPTO adds Sec.  11.30 to state the criteria by which the OED 
Director may enter into a diversion agreement with a practitioner.
    The USPTO amends Sec.  11.43 to clarify that all motions shall set 
forth the basis for requested relief, but prescribed time periods apply 
to only certain motions and that those motions shall be accompanied by 
a written memorandum.
    The USPTO amends Sec.  11.44(a) to clarify that hearings may be 
held by videoconference and that the transcript of the hearing need not 
be created by a stenographer.
    The USPTO amends Sec.  11.52 to revise and restructure the contents 
of paragraphs (a) and (b) into revised paragraphs (a), (b), and (c) to 
provide clarity regarding certain discovery obligations on the part of 
the propounding and responding parties. Former paragraph (c) is 
redesignated as paragraph (d), and the cross-reference to former 
paragraph (a) is updated. Former paragraphs (d) through (f) are 
redesignated as paragraphs (e) through (g).
    The USPTO amends Sec.  11.55(m) to eliminate the requirement to 
submit an affidavit of support with a motion for an extension of time 
to file a brief regarding an appeal to the USPTO Director and to 
reorganize the section to move to new paragraph (p) the provision 
allowing the USPTO Director to extend, for good cause, the time for 
filing such a brief.
    The USPTO adds Sec.  11.504(e) to address circumstances when a 
practitioner enters into an arrangement to share legal fees with a non-
practitioner, to form a partnership with a non-practitioner, or to be 
part of a for-profit association or corporation owned by a non-
practitioner. Specifically, Sec.  11.504(e) defers to the attorney 
licensing authority of the State(s) that affirmatively regulate(s) such 
arrangement provided such arrangement fully complies with the laws, 
rules, and regulations of the attorney licensing authority of any such 
State(s).

Rulemaking Requirements

A. Administrative Procedure Act

    The changes in this rulemaking involve rules of agency practice and 
procedure, and/or interpretive rules. See Perez v. Mortgage Bankers 
Ass'n, 135 S. Ct. 1199, 1204 (2015) (interpretive rules ``advise the 
public of the agency's construction of the statutes and rules which it 
administers'') (citations and internal quotation marks omitted); Nat'l 
Org. of Veterans' Advocates v. Sec'y of Veterans Affairs, 260 F.3d 
1365, 1375 (Fed. Cir. 2001) (rule that clarifies interpretation of a 
statute is interpretive); Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 
690 (D.C. Cir. 2001) (rules governing an application process are 
procedural under the Administrative Procedure Act); Inova Alexandria 
Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for handling 
appeals are procedural where they do not change the substantive 
standard for reviewing claims).
    Accordingly, prior notice and opportunity for public comment for 
the changes in this rulemaking are not required pursuant to 5 U.S.C. 
553(b) or (c), or any other law. See Perez, 135 S. Ct. at 1206 (notice-
and-comment procedures are not required when an agency ``issue[s] an 
initial interpretive rule'' or when it amends or repeals that 
interpretive rule); Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 
(Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 
2(b)(2)(B), do not require notice-and-comment rulemaking for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice'') (quoting 5 U.S.C. 
553(b)(A)). Nevertheless, the USPTO has chosen to seek public comment 
before implementing the rule to benefit from the public's input.

B. Regulatory Flexibility Act

    For the reasons set forth in this rulemaking, the Senior Counsel 
for Regulatory and Legislative Affairs, Office of General Law, of the 
USPTO, has certified to the Chief Counsel for Advocacy of the Small 
Business Administration that the changes in this rule will not have a 
significant economic impact on a substantial number of small entities. 
See 5 U.S.C. 605(b).
    This rule eliminates the $110.00 fee that is charged when a 
registered patent agent changes their registration from an agent to an 
attorney to incentivize patent agents who become patent attorneys to 
promptly update their status in the register. This change is expected 
to impact approximately 340 patent agents each year. Patent agents who 
become licensed attorneys are expected to request a change in status in 
order to accurately convey their status to the public. 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, assuming that all 
patent agents impacted by this rule are small entities, the elimination 
of the fee will not impact a substantial number of small entities 
because the approximately 340 patent agents do not constitute a 
significant percentage of the approximately 47,000 patent practitioners 
registered to appear before the Office. In addition, the elimination

[[Page 45085]]

of the $110.00 fee will result in a modest benefit to those patent 
agents, as they are no longer be required to pay the fee when changing 
their designation from patent agent to patent attorney.
    This rule also amends the rules regarding the representation of 
others before the USPTO by implementing new requirements and clarifying 
or improving existing regulations to better protect the public. This 
rule makes changes to the rules governing reciprocal recognition for 
the approximately 400 recognized foreign attorneys or agents who 
practice before the Office in trademark matters. These changes require 
any reciprocally recognized foreign attorney or agent to keep contact 
information up to date, provide proof of good standing as a trademark 
practitioner before the trademark office of the country in which they 
reside, and notify the OED Director of any lapse in their authorization 
to represent clients before the trademark office in the country in 
which they are registered and reside. Absent a showing of cause, 
failure to comply shall result in the withdrawal of the reciprocal 
recognition, but an opportunity for reinstatement may be offered.
    The Office also makes changes to its disciplinary procedures to 
formalize a diversion program for patent and trademark practitioners 
who struggle with physical or mental health issues or law practice 
management issues. The program assists those practitioners in 
addressing the root causes of those issues, in lieu of formal 
discipline.
    Finally, this rule makes other minor administrative changes to the 
regulations to simplify and otherwise improve consistency with existing 
requirements, thereby facilitating the public's compliance with 
existing regulations, including aligning with existing practice the 
rule governing practice before the Office by persons ineligible to 
become registered under Sec.  11.6 because of their immigration status; 
changing the rule governing the professional independence of a 
practitioner to allow a practitioner to share legal fees with a non-
practitioner, to form a partnership with a non-practitioner, or to be 
part of a for-profit association or corporation owned by a non-
practitioner, provided such arrangement fully complies with the laws, 
rules, and regulations of the attorney licensing authority of the 
State(s) that affirmatively regulate(s) such arrangement; clarifying 
the procedures regarding disciplinary hearings and appeals of the same; 
and removing an inadvertent reference to ``emeritus status.''
    These changes to the rules governing the recognition to practice 
before the Office apply to the approximately 400 reciprocally 
recognized trademark practitioners who currently appear before the 
Office and 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 because the 
changes to the regulations are procedural in nature. The one change 
that may impose a new requirement is the provision for the 
approximately 400 reciprocally recognized foreign attorneys or agents 
to provide contact information and certificates of good standing as 
trademark practitioners before the trademark offices of the countries 
in which they reside. However, this provision is not expected to place 
a significant burden on those foreign attorneys or agents. The changes 
are expected to be of minimal or no additional burden to those 
practicing before the Office.
    For the reasons discussed above, this rulemaking will not have a 
significant economic impact on a substantial number of small entities.

C. Executive Order (E.O.) 12866 (Regulatory Planning and Review)

    This rulemaking has been determined to be significant for purposes 
of E.O. 12866 (Sept. 30, 1993).

D. Executive Order 13563 (Improving Regulation and Regulatory Review)

    The Office has complied with E.O. 13563 (Jan. 18, 2011). 
Specifically, the Office has, to the extent feasible and applicable: 
(1) made a reasoned determination that the benefits justify the costs 
of the rule; (2) tailored the rule to impose the least burden on 
society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector, and the public as a whole, 
and provided online access to the rulemaking docket; (7) attempted to 
promote coordination, simplification, and harmonization across 
Government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.

E. Executive Order 13132 (Federalism)

    This rulemaking does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under E.O. 13132 (Aug. 4, 1999).

F. Executive Order 13175 (Tribal Consultation)

    This rulemaking will not: (1) have substantial direct effects on 
one or more Indian Tribes; (2) impose substantial direct compliance 
costs on Indian Tribal governments; or (3) preempt Tribal law. 
Therefore, a Tribal summary impact statement is not required under E.O. 
13175 (Nov. 6, 2000).

G. Executive Order 13211 (Energy Effects)

    This rulemaking is not a significant energy action under E.O. 13211 
because this rulemaking is not likely to have a significant adverse 
effect on the supply, distribution, or use of energy. Therefore, a 
Statement of Energy Effects is not required under E.O. 13211 (May 18, 
2001).

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 E.O. 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 E.O. 13045 
(Apr. 21, 1997).

J. Executive Order 12630 (Taking of Private Property)

    This rulemaking will not effect a taking of private property or 
otherwise have taking implications under E.O. 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.), the 
USPTO will submit a report containing the final rule and other required 
information to

[[Page 45086]]

the U.S. Senate, the U.S. House of Representatives, and the Comptroller 
General of the Government Accountability Office. The changes in this 
rulemaking are not expected to result in an annual effect on the 
economy of $100 million or more, a major increase in costs or prices, 
or significant adverse effects on competition, employment, investment, 
productivity, innovation, or the ability of U.S.-based enterprises to 
compete with foreign-based enterprises in domestic and export markets. 
Therefore, this rulemaking is not expected to result in a ``major 
rule'' as defined in 5 U.S.C. 804(2).

L. Unfunded Mandates Reform Act of 1995

    The changes in this 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 will not have any effect on the quality of the 
environment and is thus categorically excluded from review under the 
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.

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).
    This rulemaking benefits the public by improving the accuracy of 
the register of attorneys and agents who are permitted to practice 
before the USPTO in patent matters. Specifically, removing the fee to 
change from agent to attorney is expected to incentivize a registered 
patent agent who is an attorney but has not updated their registration 
status to do so. The fee removal reduces the estimated cost burdens 
associated with 0651-0012 by $27,720; (252 respondents x $110 fee = 
$27,720). Accordingly, the current estimate of patent agents who change 
to attorney in 0651-0012 are expected to increase from 252 
practitioners to the new estimate of at least 340 practitioners.
    The expected increase in practitioners who change their 
registration status will result in a slight hourly burden increase of 
44 hours; (88 practitioners x 0.5 hours = 44 hours). The USPTO further 
estimates that this increase of 88 respondents will add seven hours of 
recordkeeping burden to 0651-0012; (88 practitioners x 0.083 hours = 7 
hours). These burden estimates are based on the prior OMB approved 
burdens associated with information collection 0651-0012 and may be 
different from any forecasts mentioned in other parts of this rule. 
Overall, this final rule adds 51 burden hours and removes $27,720 in 
cost burdens.
    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.

P. E-Government Act Compliance

    The USPTO is committed to compliance with the E-Government Act to 
promote the use of the internet and other information technologies, to 
provide increased opportunities for citizen access to Government 
information and services, and for other purposes.

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 USPTO 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.


Sec.  1.21  [Amended]

0
2. Amend Sec.  1.21 by removing paragraph (a)(2)(iii).

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.  11.7 by revising paragraph (l) to read as follows:


Sec.  11.7  Requirements for registration.

* * * * *
    (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 their good standing as an 
attorney.

0
5. Amend Sec.  11.9 by revising paragraph (b) to read as follows:


Sec.  11.9  Limited recognition in patent matters.

* * * * *
    (b) An individual ineligible to become registered under Sec.  11.6 
because of their immigration status may be granted limited recognition 
to practice before the Office in patent matters, provided the U.S. 
Government authorizes employment or training in the United States for 
the individual to represent a patent applicant by preparing or 
prosecuting a patent application, and the individual fulfills the 
provisions of paragraphs (d) and (e) of this section. Limited 
recognition shall be granted only for a period consistent with the 
terms of the immigration status and employment or training authorized. 
Limited recognition is subject to United States immigration rules, 
statutes, laws,

[[Page 45087]]

and regulations. If granted, limited recognition shall automatically 
terminate if the individual ceases to: lawfully reside in the United 
States, maintain authorized employment or training, or maintain their 
immigration status. Limited recognition shall not be granted or 
extended to a non-U.S. citizen residing outside the United States.
* * * * *

0
6. Amend Sec.  11.14 by revising paragraph (c)(1), adding a heading to 
paragraph (d), revising paragraph (f), and adding paragraphs (g) 
through (j) to read as follows:


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

* * * * *
    (c) * * *
    (1) Any foreign attorney or agent who is not a resident of the 
United States who shall file a written application for reciprocal 
recognition under paragraph (f) of this section and prove to the 
satisfaction of the OED Director that they are a registered and active 
member in good standing as a trademark practitioner before the 
trademark office of the country in which they reside and practice and 
possess good moral character and reputation, may be recognized for the 
limited purpose of representing parties located in such country before 
the Office in the presentation and prosecution of trademark matters, 
provided the trademark office of such country and the USPTO have 
reached an official understanding to allow substantially reciprocal 
privileges to those permitted to practice in trademark matters before 
the Office. Recognition under this paragraph (c)(1) shall continue only 
during the period in which the conditions specified in this paragraph 
(c)(1) are met.
* * * * *
    (d) Effect of recognition. * * *
* * * * *
    (f) Application for reciprocal recognition. An individual seeking 
reciprocal recognition under paragraph (c)(1) of this section, in 
addition to providing evidence satisfying the provisions of paragraph 
(c)(1) of this section, shall apply in writing to the OED Director for 
reciprocal recognition, and shall pay the application fee required by 
Sec.  1.21(a)(1)(i) of this subchapter.
    (g) Obligation to provide updated contact information and licensure 
status. A practitioner granted reciprocal recognition under paragraph 
(c)(1) of this section shall provide to the OED Director their postal 
address, at least one and up to three email addresses where they 
receive email, and a business telephone number, as well as any change 
to such addresses and telephone number within 30 days of the date of 
the change. Any reciprocally recognized practitioner failing to provide 
the information to the OED Director or update the information within 30 
days of the date of change is subject to having their reciprocal 
recognition withdrawn under paragraph (i) of this section. A 
practitioner granted reciprocal recognition under paragraph (c)(1) of 
this section shall notify the OED Director of any lapse in their 
authorization to represent clients before the trademark office in the 
country in which they are registered and reside within 30 days of the 
lapse.
    (h) Communications with recognized trademark practitioners. The OED 
Director may address a letter to any practitioner granted reciprocal 
recognition under paragraph (c)(1) of this section, to the postal 
address last provided to the OED Director, for the purposes of 
ascertaining the practitioner's contact information and/or the 
practitioner's good standing with the trademark office in the country 
in which the practitioner is registered and resides. Any practitioner 
to whom such a letter is sent shall provide their contact information, 
and, if requested, a certificate of good standing with the trademark 
office in the country in which the practitioner is registered and 
resides. Any practitioner failing to reply and give any information 
requested by the OED Director within a time limit specified will be 
subject to having their reciprocal recognition withdrawn under 
paragraph (i) of this section.
    (i) Withdrawal of reciprocal recognition. Upon notice that a 
trademark practitioner registered under paragraph (c)(1) of this 
section is no longer registered with, in good standing with, or 
otherwise eligible to practice before the trademark office of the 
country upon which reciprocal recognition is based; that such 
practitioner no longer resides in such country; or that such 
practitioner has not provided information required in paragraphs (g) 
and/or (h) of this section, and absent a showing of cause why the 
practitioner's recognition should not be withdrawn, the OED Director 
shall promptly withdraw such recognition and publish a notice of such 
action.
    (j) Reinstatement of reciprocal recognition. Any practitioner whose 
recognition has been withdrawn pursuant to paragraph (i) of this 
section may reapply for recognition under paragraph (f) of this 
section.


0
7. Amend Sec.  11.19 by revising paragraph (a) 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 or inactivated under Sec.  11.11, all practitioners authorized 
under Sec.  41.5(a) or Sec.  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 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.
* * * * *

0
8. Amend Sec.  11.22 by revising paragraphs (h)(3) and (4) and adding 
paragraph (h)(5) to read as follows:


Sec.  11.22  Disciplinary investigations.

* * * * *
    (h) * * *
    (3) Instituting formal charges upon the approval of the Committee 
on Discipline;
    (4) Entering into a settlement agreement with the practitioner and 
submitting the same for the approval of the USPTO Director; or
    (5) Entering into a diversion agreement with the practitioner.
* * * * *

0
9. Add Sec.  11.30 to read as follows:


Sec.  11.30  Participation in the USPTO Diversion Program.

    (a) Before or after a complaint under Sec.  11.34 is filed, the OED 
Director may dispose of a disciplinary matter by entering into a 
diversion agreement with a practitioner. Diversion agreements may 
provide for, but are not limited to, law office management assistance, 
counseling, participation in lawyer assistance programs, and attendance 
at continuing legal education programs. Neither the OED Director nor 
the practitioner is under any obligation to propose or enter into a 
diversion agreement. To be an eligible party to a diversion agreement, 
a practitioner cannot have been disciplined by the USPTO or another 
jurisdiction within the past three years, except that discipline by 
another jurisdiction is not disqualifying if that discipline in

[[Page 45088]]

another jurisdiction was based on the conduct forming the basis for the 
current investigation.
    (b) For a practitioner to be eligible for diversion, the conduct at 
issue must not involve:
    (1) The misappropriation of funds or dishonesty, deceit, fraud, or 
misrepresentation;
    (2) Substantial prejudice to a client or other person as a result 
of the conduct;
    (3) A serious crime as defined in Sec.  11.1; or
    (4) A pattern of similar misconduct unless the misconduct at issue 
is minor and related to a chronic physical or mental health condition 
or disease.
    (c) The diversion agreement is automatically completed when the 
terms of the agreement have been fulfilled. A practitioner's successful 
completion of the diversion agreement bars the OED Director from 
pursuing discipline based on the conduct set forth in the diversion 
agreement.
    (d) A material breach of the diversion agreement shall be cause for 
termination of the practitioner's participation in the diversion 
program. Upon a material breach of the diversion agreement, the OED 
Director may pursue discipline based on the conduct set forth in the 
diversion agreement.


0
10. 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 set forth a basis 
for the requested relief, including a concise statement of the facts 
and supporting reasons, along with a citation of the authorities upon 
which the movant relies. For any motion for summary judgment or motion 
to dismiss, the basis shall be provided in a written memorandum 
accompanying the motion. All motions and memoranda shall be double-
spaced and written in 12-point font unless otherwise ordered by the 
hearing officer. Unless the hearing officer extends the time for good 
cause, the opposing party shall serve and file a memorandum in response 
to any motion for summary judgment or motion to dismiss 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. 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
11. Amend Sec.  11.44 by revising paragraph (a) to read as follows:


Sec.  11.44  Hearings.

    (a) The hearing officer shall preside over hearings in disciplinary 
proceedings. After the time for filing an answer has elapsed, the 
hearing officer shall set the time and place for the hearing. In cases 
involving an incarcerated respondent, any necessary oral hearing may be 
held at the location of incarceration. The hearing officer may order a 
hearing to be conducted by remote videoconference in whole or in part. 
Oral hearings will be 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 also be provided to the 
OED Director and the respondent at the expense of the Office.
* * * * *

0
12. Amend Sec.  11.52 by:
0
a. Revising paragraphs (a) and (b);
0
b. Redesignating paragraphs (c) through (f) as paragraphs (d) through 
(g);
0
c. Adding a new paragraph (c); and
0
d. Revising newly redesignated paragraph (d).
    The revisions and addition read as follows:


Sec.  11.52  Written discovery.

    (a) After an answer is filed under Sec.  11.36, a party may file a 
motion under Sec.  11.43 seeking authorization to propound written 
discovery of relevant evidence, including:
    (1) A reasonable number of requests for admission, including 
requests for admission as to the genuineness of documents;
    (2) A reasonable number of interrogatories;
    (3) A reasonable number of documents to be produced for inspection 
and copying; and
    (4) A reasonable number of things other than documents to be 
produced for inspection.
    (b) The motion shall include a copy of the proposed written 
discovery requests and explain in detail, for each request made, how 
the discovery sought is reasonable and relevant to an issue actually 
raised in the complaint or the answer. 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.
    (c) The hearing officer may authorize any discovery requests the 
hearing officer deems to be reasonable and relevant. Unless the hearing 
officer orders otherwise, within 5 days of the hearing officer 
authorizing any discovery requests, the moving party shall serve a copy 
of the authorized discovery requests to the opposing party and, within 
30 days of such service, the opposing party shall serve responses to 
the authorized discovery requests.
    (d) Discovery shall not be authorized under paragraph (c) 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.
* * * * *

0
13. Amend Sec.  11.55 by revising paragraph (m) and adding paragraph 
(p) to read as follows:


Sec.  11.55  Appeal to the USPTO Director.

* * * * *
    (m) Unless the USPTO Director permits, no further briefs or motions 
shall be filed.
* * * * *
    (p) The USPTO Director may extend the time for filing a brief upon 
the granting of a motion setting forth good cause warranting the 
extension.


0
14. Amend Sec.  11.504 by adding paragraph (e) to read as follows:


Sec.  11.504  Professional independence of a practitioner.

* * * * *
    (e) The prohibitions of paragraph (a), (b), or (d)(1) or (2) of 
this section shall not apply to an arrangement that fully complies with 
the laws, rules, and regulations of the attorney licensing authority of 
the State(s) that affirmatively regulate(s) such arrangement.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2023-14606 Filed 7-13-23; 8:45 am]
BILLING CODE 3510-16-P