Cross-Appeals in Patent and Trademark Office Disciplinary Proceedings

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 10

[Docket No. 930366-4319]

RIN 0651-AA65

Cross-Appeals in Patent and Trademark Office Disciplinary

Proceedings

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Proposed rulemaking.

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SUMMARY: On July 21, 1993, the Patent and Trademark Office (PTO)

proposed amending a rule of practice in practitioner disciplinary

proceedings. 58 FR 38994. The proposed rule change provides for a time

period for a party to a disciplinary proceeding to file a cross-appeal,

after the other party (the respondent or the Director of the Office of

Enrollment and Discipline) to the proceeding has appealed from the

initial decision of the administrative law judge (ALJ) to the

Commissioner. Currently, PTO rules do not provide for such a time

period. A party in a disciplinary proceeding may be interested in

appealing only if the other party has appealed. Allowing a time period

for filing a cross-appeal will give parties to disciplinary cases more

flexibility after an initial decision by the administrative

[[Page 4396]] law judge and will avoid the necessity of filing

contingent appeal simply to preserve rights in the event the other

party files an appeal.

One comment to the rule change proposed on July 21, 1993, was

received suggesting substantive changes. This second notice adopts that

suggested change.

DATES: Written comments must be received on or before February 22, 1995

to ensure consideration. An oral hearing will not be conducted.

ADDRESSES: Address written comments to Commissioner of Patents and

Trademarks, Box OED, Washington, DC 20231, marked to the attention of

Harry I. Moatz. Written comments will be available for public

inspection in Suite 518, on the 5th floor of Crystal Park I, located at

2011 Crystal Drive, Arlington, Virginia.

FOR FURTHER INFORMATION CONTACT:

Harry I. Moatz by telephone at (703) 308-5273 or by mail marked to his

attention and addressed to Commissioner of Patents and Trademarks, Box

OED, Washington, D.C. 20231.

SUPPLEMENTARY INFORMATION: A Notice of Proposed Rulemaking was

published in the Federal Register (58 FR 38994) on July 21, 1993, and

in the Official Gazette of the PTO (1153 Off. Gaz. 32) on August 10,

1993. Comments were due August 20, 1993. One comment was received. The

comment suggested a substantive change to the original proposed

rulemaking. The PTO has adopted the change and is now publishing a

second notice requesting comments on the amended notice.

Pursuant to 37 CFR 10.132 et seq., the Director of the Office of

Enrollment and Discipline within the PTO may initiate a disciplinary

proceeding against a practitioner. If the proceeding is contested by

the practitioner and the Director continues to prosecute, an ALJ for

the Department of Commerce enters an initial decision which includes

findings of fact, conclusions of law and an order. 37 CFR Sec. 10.154.

Either party to the proceeding may appeal from the initial decision

of the ALJ to the Commissioner within thirty (30) days of the date of

the decision. 37 CFR Sec. 10.155(a). However, prior to this proposed

rule change, Sec. 101.155(a) did not provide for the filing of a cross-

appeal.

With regard to interference proceedings, 37 CFR Sec. 1.304(a)

addresses the filing of cross-appeals by stating in pertinent part

that:

the time for filing a cross-appeal [to the Court of Appeals for the

Federal Circuit] or cross-action [in a district court] expires (1)

14 days after service of the notice of appeal or the summons and

complaint or (2) two months after the date of decision of the Board

of Patent Appeals and Interferences, whichever is later.

The proposed rule change is similar to the cross-appeal authorized in

interference proceedings.

Response to and Analysis of Comment

The single comment suggested that the second sentence of the

proposed Sec. 10.155(a) be modified by adding ``pursuant to

Sec. 10.142'' after ``(1) 14 days after service of the appeal'' to make

clear that the period for filing a cross-appeal or reply brief runs

from service pursuant to Sec. 10.142. The suggestion is being adopted.

The comment further suggested that the fifth sentence in the rule

proposed on July 21, 1993, be separated into three new sentences. The

first and second new sentences make clear that ``the other party to an

appeal or cross-appeal may file a reply brief,'' and that a ``reply

brief by the respondent'' is to be ``served in duplicate with the

Director.'' The third new sentence provides a date certain for filing

any reply brief by avoiding uncertainty as to when ``receipt'' of an

appeal, cross-appeal or copy thereof occurs, and by relying on the date

of ``service pursuant to Sec. 10.142'' of an appeal, cross-appeal, or a

copy thereof. The suggestions have been adopted in the proposed rules.

Other Considerations

This rule change conforms with the requirements of the Regulatory

Flexibility Act (5 U.S.C. 601et set.), Executive Orders 12612 and

12866, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq.

The General Counsel of the Department of Commerce has certified to

the Chief Counsel for Advocacy, Small Business Administration, that the

rule change will not have a significant economic impact on a

substantial number of small entities (Regulatory Flexibility Act, 5

U.S.C. 605(b)). The principal impact of the rule change is to provide a

time period to file cross-appeal in a PTO disciplinary proceeding. See

the original notice of proposed rulemaking published in the Federal

Register, 58 FR at 38996.

The PTO has determined that the rule change has no Federalism

implications affecting the relationship between the National Government

and the States as outlined in Executive Order 12612. The Office of

Management has determined that the rule change is not significant for

the purposes of Executive Order 12866.

The rule change will not impose a burden under the Paperwork

Reduction Act of 1980, 44 U.S.C. 3501 et seq., since no record keeping

or reporting requirements within the coverage of the Act are placed

upon the public.

List of Subjects in 37 CFR Part 10

Administrative practice and procedure, Inventions and patents,

Lawyers, Reporting and recordkeeping requirements.

For the reasons set out in the preamble, and pursuant to the

authority contained in 35 U.S.C. 6, the PTO proposes to amend 37 CFR

part 10 as follows, wherein deletions are indicated by brackets ([ ])

and additions by arrows (>If an appeal is taken, the time for filing

a cross-appeal expires (1) 14 days after the date of service of the

appeal pursuant to Sec. 10.142 or (2) 30 days after the date of the

initial decision of the administrative law judge, whichever is later.or cross appealor cross-appealon the other partyor

cross-appealThe other party to an appeal or cross-appeal may file a

reply brief. A respondent's reply brief shall be filed and served in

duplicate with the Director. The time for filing any reply brief

expiresthe date ofservice pursuant to Sec. 10.142, cross-appealaon the other party, cross appeal, if any,s<,

if any, the Director shall transmit the entire record to the

Commissioner.

* * * * * [[Page 4397]]

Dated: January 13, 1995.

Michael K. Kirk,

Deputy Assistant Secretary of Commerce and Deputy Commissioner of

Patents and Trademarks.

[FR Doc. 95-1602 Filed 1-20-95; 8:45 am]

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