Cross-Appeals in Patent and Trademark Office Disciplinary Proceedings

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 10

[Docket No. 9511277-5277-01]

RIN 0651-AA65

Cross-Appeals in Patent and Trademark Office Disciplinary

Proceedings

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The Patent and Trademark Office (PTO) is amending a rule of

practice in disciplinary cases to provide a time period for filing a

cross-appeal to the Commissioner of Patents and Trademarks after the

initial decision of the Administrative Law Judge (ALJ). This amendment

will simplify the appeals practice in disciplinary cases by eliminating

the need to file contingent appeals.

EFFECTIVE DATE: January 16, 1996.

FOR FURTHER INFORMATION CONTACT:

Karen L. Bovard, 703-308-5316.

SUPPLEMENTARY INFORMATION: The PTO issued a second notice of proposed

rulemaking to amend a rule of practice in practitioner disciplinary

proceedings. 60 FR 4395, Jan. 23, 1995. Under the existing practice,

after the ALJ's initial decision, a party (either the respondent or the

Director of the Office of Enrollment and Discipline) might be obliged

to file a contingent appeal to protect cross-appealable issues in the

event the opposing party filed an appeal. The amended rule provides a

time period for the party to file a cross-appeal after the opposing

party has appealed to the Commissioner from the ALJ's initial decision.

No comment to the second notice of proposed rulemaking was

received. The proposed rule is adopted.

Other Considerations

This rule change conforms with the requirements of the Regulatory

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

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

The Assistant General Counsel for Legislation and Regulation of the

Department of Commerce has certified to the Chief Counsel for Advocacy

of the Small Business Administration that the rule change will not have

a significant 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 a cross-appeal in a

PTO disciplinary proceeding. See the first notice of proposed

rulemaking. 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 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 recordkeeping

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.

Pursuant to the authority contained in 35 U.S.C. 6, the PTO amends

37 CFR part 10 as follows:

PART 10--REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK

OFFICE

1. The authority citation for 37 CFR part 10 continues to read as

follows:

[[Page 64126]]

Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 6, 31, 32,

41.

2. Section 10.155 is amended by revising paragraph (a) to read as

follows:

Sec. 10.155 Appeal to the Commissioner.

(a) Within thirty (30) days from the date of the initial decision

of the administrative law judge under Sec. 10.154, either party may

appeal to the Commissioner. If an appeal is taken, the time for filing

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

pursuant to Sec. 10.142 or 30 days after the date of initial decision

of the administrative law judge, whichever is later. An appeal or

cross-appeal by the respondent will be filed and served with the

Director in duplicate and will include exceptions to the decisions of

the administrative law judge and supporting reasons for those

exceptions. If the Director files the appeal or cross-appeal, the

Director shall serve on the other party a copy of the appeal or cross-

appeal. The 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

expires thirty (30) days after the date of service pursuant to

Sec. 10.142 of an appeal, cross-appeal or copy thereof. If the Director

files a reply brief, the Director shall serve on the other party a copy

of the reply brief. Upon the filing of an appeal, cross-appeal, if any,

and reply briefs, if any, the Director shall transmit the entire record

to the Commissioner.

* * * * *

Dated: December 7, 1995.

Bruce A. Lehman,

Assistant Secretary of Commerce and Commissioner of Patents and

Trademarks.

[FR Doc. 95-30340 Filed 12-13-95; 8:45 am]

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