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

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 2, 7, 10, 11, and 41

[Docket No.: PTO-C-2005-0013]

RIN 0651-AB55

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

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Final rule.

SUMMARY:

The United States Patent and Trademark Office (Office) is adopting new rules governing the conduct of disciplinary investigations, issuing warnings when closing such investigations, disciplinary proceedings, non-disciplinary transfer to disability inactive status and reinstatement to practice before the Office. The Office is adopting a new rule regarding recognition to practice before the Office in trademark cases. The Office also is adopting a new rule to address a practitioner's signature and certificate for correspondence filed in the Office. These changes will enable the Office to better protect the public from practitioners who do not comply with the Office's ethics rules and from incapacitated practitioners.

DATES:

Effective Date:

September 15, 2008.

FOR FURTHER INFORMATION CONTACT:

Harry I. Moatz ((571) 272-6069), Director of Enrollment and Discipline (OED Director), directly by phone, by facsimile to (571) 273-6069 marked to the attention of Mr. Moatz, or by mail addressed to: Mail Stop OED-Ethics Rules, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

SUPPLEMENTARY INFORMATION:

Congress granted express authority to the Office to “establish regulations, not inconsistent with law, which * * * may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office.” 35 U.S.C. 2(b)(2)(D). Congress also provided that the “Director may, after notice and opportunity for a hearing, suspend or exclude, either generally or in any particular case, from further practice before the Patent and Trademark Office, * * * any * * * agent, or attorney shown to be incompetent or disreputable, or guilty of gross misconduct, or who does not comply with the regulations established under section 2(b)(2)(D) of this title, or who shall, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead, or threaten any applicant or prospective applicant, or other person having immediate or prospective business before the Office. The reasons for any such suspension or exclusion shall be duly recorded.” 35 U.S.C. 32. In so doing, Congress vested express and implied authority with the Office to prescribe rules of procedure that are applicable to practitioners recognized to practice before the Office.

On December 12, 2003, the Office published

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

a Notice of Proposed Rule Making in the

Federal Register

(68 FR 69441), 1278

Off. Gaz. Pat. Office

22 (Jan. 6, 2004) proposing to amend parts 1 and 2 of the rules and procedures governing patent and trademark prosecution (Title 37 of the Code of Federal Regulations), reserving part 10 and introducing part 11. Included in the proposed rules for part 11 were rules governing the conduct of investigations, disciplinary proceedings, issuing warnings, disciplinary proceedings, reinstatement, recognition to practice before the Office in trademark cases, and a practitioner's signature and certificate for correspondence filed in the Office—principally rules 11.2, 11.3, 11.5, and 11.14 through 11.61. One hundred sixty-three written comments were received. After reviewing the written comments, the Office decided to revise a number of the rules published in the December 12, 2003 Notice. The Office published

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

a Supplemental Notice of Proposed Rule Making (SNPR), on February 28, 2007, in the

Federal Register

(72 FR 9196), 1316

Off. Gaz. Pat. Office

123 (Mar. 27, 2007) regarding rules 11.1, 11.2, 11.3, 11.5, and 11.14 through 11.61 and requested additional comments on those revised proposed rules. The Office received fifteen comments from professional and intellectual property organizations, law firms, individual practitioners and members of the public. Many of the revised proposed rules were similar to the approach of the current regulations. Other revised proposed rules were intended to introduce new disciplinary procedures for practitioners who have been suspended or disbarred in other disciplinary jurisdictions for ethical or professional misconduct, practitioners convicted of serious crimes, and practitioners having disability issues.

The December 12, 2003 Notice also proposed changes to the ethics rules governing the conduct of recognized patent practitioners and others practicing before the Office as well as rules governing enrollment of recognized practitioners. Following receipt and consideration of the comments, provisions included in the December 12, 2003 Notice regarding enrollment were adopted in final rules on July 26, 2004. See

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

Final Rule, published in the

Federal Register

, 69 FR 35428 (June 24, 2004), 1288

Off. Gaz. Pat. Office

109 (November 16, 2004). Comments on proposed changes to the substantive ethics rules remain under consideration by the Office, and it is expected that the ethics rules will be the subject of a later, separate notice.

In addition, several rules proposed in the December 12, 2003 Notice are directly or indirectly dependent on the development of electronic systems to implement rules governing annual fees, § 11.8, and continuing legal education, §§ 11.12 and 11.13. For example, proposed §§ 11.8(d), 11.12 and 11.13 are directly dependent on development of the systems, whereas proposed § 11.11(b) through 11.11(f) are indirectly dependent on the development. Further consideration of rules dependent on implementing electronic systems awaits completion of the development and implementation of the systems. Accordingly, the rules below do not refer to §§ 11.8(d), 11.11(b) through 11.11(f), 11.12 and 11.13.

The primary purposes for adopting procedures for disciplining practitioners who fail to conform to adopted standards and non-disciplinary procedures for transferring practitioners to disability inactive status include affording practitioners due process, protecting the public, preserving the integrity of the Office, and maintaining high professional standards.

These final rules will be applied only prospectively, not retroactively. In implementing the foregoing, with respect to investigations, the rules will be applied to the future actions in pending investigations and in investigations commencing on or after the effective date of the final rules. With respect to disciplinary proceedings that have already been commenced by filing a complaint under 37 CFR 10.134 before the effective date of the final rules, the final rules will not apply. Instead, these disciplinary proceedings will continue under the rules in effect on the date the complaint under § 10.134 was filed. With regard to disciplinary proceedings

commenced after the effective date of the rules, the final rules will apply. With regard to § 11.5, the final rule will be applied only prospectively to assignments and licenses written on or after the effective date of the final rules.

Discussion of Specific Rules

Title 37 of the Code of Federal Regulations, Parts 1, 2, 7, 11 and 41, are revised by amending §§ 1.4, 1.8, 1.9, 2.2, 2.11, 2.17, 2.18, 2.19, 2.24, 2.33, 2.101, 2.102, 2.105, 2.111, 2.113, 2.119, 2.161, 2.193, 7.25, 7.37, 11.1, 11.2, 11.3, 11.5 and 41.5, and adding §§ 11.14 through 11.99 as follows:

Sections 1.4, 1.8, 1.9, 2.2, 2.11, 2.17, 2.18, 2.19, 2.24, 2.33, 2.101, 2.102, 2.105, 2.111, 2.113, 2.119, 2.161, 2.193, 7.25, 7.37:

Sections 1.4(d)(3), 1.4(d)(4)(i), 1.4(d)(4)(ii)(C), 1.8(a)(2)(iii)(A), 1.9(j), 2.2(c), 2.11, 2.17(a)-(c), 2.18(a), 2.19(b), 2.24, 2.33(a)(3), 2.101(b), 2.102(a), 2.105(b)(1) and (c)(1), 2.111(b), 2.113 (b)(1), 2.119(d), 2.161(b)(3), 2.193(c)(2), 7.25(a) and 7.37(b)(3) are revised to change or add an appropriate cross-reference to Part 11 or change a cross-reference to an appropriate section in Part 11.

Section 11.1:

The definitions of “disqualified,” “Federal agency,” “Federal program” and “Serious Crime” are added to the definitions, and the definitions of “attorney or lawyer” and “State” are revised. “Disqualified,” which appears in § 11.24, would mean any action that prohibits a practitioner from participating in or appearing before the program or agency, regardless of how long the prohibition lasts or the specific terminology used. “Federal program” is defined as meaning any program established by an Act of Congress or administered by a Federal agency and “Federal agency” is defined as meaning any authority of the executive branch of the Government of the United States.

The definition of “attorney or lawyer” is revised to correct an error. The Office published a final rule in the

Federal Register

of June 24, 2004 (69 FR 34428) entitled “Changes to Representation of Others Before the United States Patent and Trademark Office.” In that final rule, there was an inadvertent omission of the word “not” preceding the term “under” in the first sentence of the definition of “attorney or lawyer” in § 11.1. An attorney or lawyer in good standing with the highest court of a State should not also be “under an order of any court or Federal agency suspending, enjoining, restraining, disbarring or otherwise restricting the attorney from practice before the bar of another State or Federal agency.” The definition is corrected by inserting “not” before “under” in the first sentence.

The definition of state is revised to clarify that state includes Commonwealths and territories of the United States, as well as the fifty states and the District of Columbia. Thus, the “court of * * * any State” in § 11.25(a) would include any courts of the fifty states, the District of Columbia, and Commonwealths and territories of the United States.

Section 11.2:

Section 11.2 provides for the appointment and duties of the Director of Enrollment and Discipline (OED Director), as well as petitions for review of decisions of the OED Director. Section 11.2(a) is revised to delete provisions for appointment of an OED Director in the event the OED Director is absent or recuses himself or herself from a case, as provision for these circumstances by rule is believed to be unnecessary.

Section 11.2(b)(4) is revised to provide for conducting investigations of matters involving possible grounds for discipline of practitioners. Except in matters meriting summary dismissal, the OED Director will afford an accused practitioner an opportunity to respond to a reasonable inquiry before a disposition is recommended or undertaken. Section 11.2(b)(5) is added to include among the OED Director's duties the initiation of a disciplinary proceeding and performance of such other duties in connection with investigations and disciplinary proceedings as may be necessary, provided the consent of a panel of three members of the Committee on Discipline is first obtained when required. Section 11.2(b)(6) is added to provide among the OED Director's duties oversight of the preliminary screening of information and closing investigations as provided for in § 11.22.

The titles of §§ 11.2(c) and 11.2(d) are revised to limit the petition provisions of these subsections to matters “regarding enrollment or recognition.” Section 11.2(c) is revised to provide that a petition to the OED Director be accompanied by payment of the fee set forth in § 1.21(a)(5)(i). A sentence in § 11.2(d) proposed in December 2003 providing that “[a] decision dismissing a complaint or closing an investigation is not subject to review by petition” has been deleted from § 11.2(d).

Section 11.2(d) also is revised to provide that a petition under this section must be accompanied by the fee set forth in § 1.21(a)(5)(ii), that a petition not filed within thirty days may be dismissed as untimely, that briefs and supporting memoranda must accompany the petition, and that an oral hearing will not be granted except when considered necessary by the USPTO Director.

Section 11.2(e) is added to provide for filing a petition to invoke supervisory authority of the USPTO Director in disciplinary matters in appropriate circumstances. For example, a person dissatisfied with a decision dismissing a grievance or closing an investigation may petition the USPTO Director to exercise supervisory authority over the OED Director. The procedure in subsection (e) is comparable to the supervisory review procedure in § 1.181 and assures supervisory review when appropriate. No fee is required for a petition to invoke the supervisory authority of the USPTO Director in disciplinary matters.

A petition under § 11.2(e) must contain a statement of the facts involved and the point or points to be reviewed and the action requested. Briefs or memoranda in support of the petition must accompany the petition. Where facts are to be proven, the proof in the form of affidavits or declarations (and exhibits, if any) must accompany the petition. The OED Director may be directed by the USPTO Director to file a reply to the petition, supplying a copy to the petitioner. An oral hearing will not be granted except when considered necessary by the USPTO Director. The filing of a petition will not stay an investigation, disciplinary proceeding or other proceedings. The petition may be dismissed as untimely if it is not filed within thirty days of the mailing date of the action or notice from which relief is requested. Any request for reconsideration of the decision of the USPTO Director may be dismissed as untimely if not filed within thirty days after the date of said decision.

Section 11.3:

Section 11.3(a), which provides for suspension of rules, in essence, continues the provisions of former § 10.170 that could be applied to regulations addressing procedures. For example, the provisions of this section may be invoked by an applicant for registration to waive the sixty-day period set in § 11.7 for completing an application for registration where events beyond applicant's control, such as a flood or fire, prevented applicant from supplying information to complete an application. The inclusion of § 11.3(a) should not be construed as an indication that there could ever be any extraordinary situation when justice requires waiver of a disciplinary rule.

Section 11.3(b) is added to provide that no petition under this section may stay a disciplinary proceeding unless ordered by the USPTO Director or a hearing officer.

Section 11.5:

The sole paragraph of § 11.5 is renumbered as § 11.5(a). Section 11.5(a) substantially continues the provisions of § 11.5, except that “applications” has been changed to “matters” at the end of the first sentence.

Subsection 11.5(b) is added to define practice before the Office as including a law-related service that comprehends any matter connected with the presentation to the Office or any of its officers or employees relating to a client's rights, privileges, duties, or responsibilities under the laws or regulations administered by the Office for the grant of a patent or registration of a trademark, or for enrollment or disciplinary matters. The section provides that nothing in § 11.5 prohibits a practitioner from employing or retaining non-practitioner assistants under the supervision of the practitioner to assist the practitioner in matters pending or contemplated to be presented before the Office.

Section 11.5(b)(1) provides a definition of practice before the Office in patent matters, which includes preparing and prosecuting any patent application, consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office, drafting the specification or claims of a patent application; drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention; and drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to the Board of Patent Appeals and Interferences, or other proceeding. This section also provides that registration to practice before the Office in patent cases sanctions the performance of those services which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate. The services are identified as including consideration of the advisability of relying upon alternative forms of protection which may be available under state law, and drafting an assignment or causing an assignment to be executed in contemplation of filing or prosecution of a patent application if the practitioner is filing or prosecuting the patent application, and assignment does no more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party.

Section 11.5(b)(2) provides a definition of practice before the Office in trademark matters which includes consulting with or giving advice to a client in contemplation of filing a trademark application or other document with the Office; preparing and prosecuting an application for trademark registration; preparing an amendment or response which may require written argument to establish the registrability of the mark; and conducting an opposition, cancellation, or concurrent use proceeding; or conducting an appeal to the Trademark Trial and Appeal Board.

The provision in proposed rule 11.5(b)(3) regarding a practitioner's conduct occurring in a non-practitioner capacity has been withdrawn as being unnecessary. The provisions of revised proposed § 11.19 would cover misconduct occurring in a non-lawyer or non-agent capacity. Section 11.19 identifies several grounds for discipline, including, but not limited to, conduct that violates a mandatory disciplinary rule of the USPTO Code of Professional Responsibility and a conviction of a serious crime.

Section 11.14:

Section 11.14 is added to set forth who may practice before the Office in trademark and other non-patent cases. Section 11.14(a), in essence, continues present practice under § 10.14(a) except as noted in the following discussion. The last sentence of § 11.14(a) adds a provision that registration as a patent practitioner does not entitle an individual to practice before the Office in trademark matters. An attorney who is no longer a member in good standing of the bar of the highest court of one state and not admitted to the bar in another state is not entitled to practice before the Office in trademark matters on the basis of the attorney's registration as a patent practitioner.

Thus, a practitioner registered with the Office as a patent attorney, but suspended or disbarred in the only state where the practitioner had been admitted to practice law, may not rely on the registration to continue to practice before the Office in trademark matters. Similarly, a practitioner registered as a patent attorney, but suspended or disbarred in the only state where the practitioner had been admitted to practice law, may not revert to registration as a patent agent prior to January 1, 1957, to continue to practice before the Office in trademark cases.

Section 11.14(b) continues the present practice under § 10.14(b). A second sentence has been added to § 11.14(b) to assure clarity under the present practice that, but for the one exception in the first sentence of this section, registration as a patent agent does not itself entitle an individual to practice before the Office in trademark matters.

Section 11.14(c) is added to continue the present practice under § 10.14(c), except as further clarified by the following provisions. The first sentence of § 11.14(c) is revised to provide that a foreign attorney or agent not a resident of the United States who seeks reciprocal recognition must file a written application for reciprocal recognition under paragraph (f) of § 11.14 and prove to the satisfaction of the OED Director that he or she is possessed of good moral character and reputation.

Sections 11.14(d) and (e) continue the present practices under former sections 10.14(d) and (e), except as noted in the following discussion. In § 11.14(e), “on behalf of a client” has been added to the end of the first sentence to make it clear that no individual is permitted to represent others before the Office in trademark matters other than those specified in paragraphs (a), (b), and (c) of this section.

Section 11.14(f) is added to expressly provide for filing an application for reciprocal recognition under § 11.14(c). This section codifies the practice of requiring an individual seeking reciprocal recognition under § 11.14(c) to apply in writing to the OED Director for reciprocal recognition and pay the fee specified in § 1.21(a)(1)(i).

Section 11.15:

Section 11.15 is added to provide for refusal to recognize a practitioner. This section continues the present practice under former § 10.15. The second sentence makes clear that a practitioner who is suspended or excluded is not entitled to practice before the Office in patent, trademark, or other non-patent matters while suspended or excluded.

Sections 11.16-11.17:

Sections 11.16-11.17 are reserved.

Section 11.18:

Section 11.18(a) is added to continue the present practice under former § 10.18(a), and extend the practice to all documents filed with a hearing officer in a disciplinary proceeding. But for specified exceptions, every document filed with the Office or a hearing officer in a disciplinary proceeding must bear a signature, personally signed by such practitioner, in compliance with § 1.4(d)(1).

Section 11.18(b)(1) is added to continue the present practice of providing that a party presenting a paper certifies to the truthfulness of the content of his or her submissions to the Office. The term “party” is not limited to practitioners, and includes

applicants. The provisions of § 11.18(b)(1) continue the present practice under § 10.18(b)(1), except for extending the practice to submissions to a hearing officer in a disciplinary proceeding. Inasmuch as the hearing officer may be employed by another Federal agency, extension of the provisions of this section to submission to the hearing officer is believed to be appropriate. The provisions of § 11.18(b)(1) continue the present practice under § 10.18(b)(1) except as follows. Section 11.18(b)(1) is clarified to prohibit “willfully and knowingly” making false, fictitious or fraudulent statements or representations or “willfully and knowingly” making or using a false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry. This section repeats an obligation all parties submitting papers to the Office otherwise have under 18 U.S.C. 1001. This section applies the statutory standard of conduct applicable to the submission of material facts in courts to proceedings in the Office and to disciplinary proceedings.

Section 11.18(b)(1) also provides that whoever violates the provisions of § 11.18(b)(1) is subject to penalties in criminal statutes in addition to those under 18 U.S.C. 1001. Inasmuch as an offending paper may have little or no probative value, § 11.18(b)(1) provides that violation of the rule may jeopardize the probative value of the paper.

Unlike § 10.18(b)(1), § 11.18(b)(1) does not provide that violations of paragraph (b)(1) may jeopardize the validity of the application or document inasmuch as the conditions for valid application are set by statute. Similarly, unlike § 10.18(b)(1), § 11.18(b)(1) does not provide that violations of paragraph (b)(1) may jeopardize the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom. It is unnecessary that the regulation remind parties of any civil jeopardy to which they are subject for a violation of paragraph (b)(1).

Section 11.18(b)(2) is added to provide that a party submitting a paper certifies to the best of the party's knowledge, information and belief, formed after an inquiry reasonable under the circumstances, that the paper is not being presented for any improper purpose, that other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the establishment of new law, that allegations and factual contentions have evidentiary support, and that denials of factual contentions are warranted on the evidence or are reasonably based on a lack of information or belief. Section 11.18(b)(2) continues the current practice under former § 10.18(b)(2) except for substitution of “any proceeding” for prosecution in subsection 11.18(b)(2)(i).

Section 11.18(c) is added to provide a non-exhaustive list of sanctions or actions the USPTO Director may take, after notice and reasonable opportunity to respond, for a violation of paragraph (b)(2)(i) through (b)(2)(iv) of § 11.18. Section 11.18(c) continues some of the sanctions under former § 10.18(c), including precluding a party or practitioner from submitting a paper, or presenting or contesting an issue; requiring a terminal disclaimer; or terminating the proceedings in the Office. Section 11.18(c) adds specific sanctions and actions, for example, striking the offending paper, referring a practitioner's conduct to the Director of Enrollment and Discipline for appropriate action; affecting the weight given to the offending paper; and terminating the proceedings in the Office.

These sanctions in § 11.18(c) conform to those discussed in conjunction with the 1993 Amendment to Rule 11 of the Federal Rules of Civil Procedure. The commentary to the 1993 Amendment indicated that a court “has available a variety of possible sanctions to impose for violations, such as striking the offending paper; * * * referring the matter to disciplinary authorities.” Like Rule 11 of the Fed. R. Civ. P., the provisions in § 11.18 do not attempt to exhaustively enumerate the factors that should be considered or the appropriate sanctions. The Office anticipates that in taking action under § 11.18 in applying sanctions, it would use the proper considerations utilized in issuing sanctions or taking action under Rule 11. Consideration may be given, for example, to whether the improper conduct was willful or negligent; whether it was part of a pattern of activity, or an isolated event; whether it infected an entire application, or only one particular paper; whether the person has engaged in similar conduct in other matters; whether the conduct was intended to injure; what effect the conduct had on the administrative process in time and expense; whether the responsible person is trained in law; what is needed to deter that person from repetition in the same case; and what is needed to deter similar conduct by others. All of these in a particular case may be proper considerations. See, 28 U.S.C.A. Fed. R. Civ. P. 11, Adv. Comm. Notes, 1993 Amendments, Subdivisions (b) and (c).

Section 11.18(d) is added to continue the present practice under former § 10.18(d) of providing notice that any practitioner violating the provisions of § 11.18 may also be subject to disciplinary action.

Section 11.19:

Section 11.19 is added to set forth the disciplinary jurisdiction of the Office. Section 11.19(a) sets forth a list of practitioners who are subject to the disciplinary jurisdiction of the Office. These include practitioners administratively suspended, all practitioners engaged in practice before the Office; practitioners registered to practice before the Office in patent cases; inactivated practitioners, practitioners authorized to take testimony; and practitioners who have been transferred to disability inactive status, reprimanded, suspended, or excluded from the practice of law. Inasmuch as these rules are being adopted before the adoption of § 11.11(b) regarding administrative suspension and § 11.11(c) regarding administrative suspension, in connection with continuing education and annual fees, § 11.19(a) does not reference those actions. Instead, § 11.19(a) references practitioners inactivated under § 10.11. Also practitioners who have resigned are subject to such jurisdiction with respect to conduct undertaken prior to the resignation and conduct in regard to any practice before the Office following the resignation.

Section 11.19(b) is added to set forth the grounds for discipline and grounds for transfer to disability inactive status. The grounds for discipline include conviction of a serious crime, § 11.19(b)(1); discipline on ethical grounds imposed in another jurisdiction or disciplinary disqualification from participating in or appearing before any Federal program or agency, § 11.19(b)(2); and failure to comply with any order of a Court disciplining a practitioner, § 11.19(b)(3); or any final decision of the USPTO Director in a disciplinary matter; violation of the mandatory Disciplinary Rules identified in sections 10.20(b), § 11.19(b)(4); or violation of the oath or declaration taken by the practitioner, § 11.19(b)(5).

Section 11.19(b)(2) is added to set forth grounds for transfer to disability inactive status. The grounds include being transferred to disability inactive status in another jurisdiction; being judicially declared incompetent, being judicially ordered to be involuntarily committed after a hearing on the grounds of insanity, incompetency or disability, or being placed by court order under guardianship or conservatorship; or filing a motion requesting a disciplinary proceeding be held in abeyance because the

practitioner is suffering from a disability or addiction that makes it impossible for the practitioner to adequately defend the charges in the disciplinary proceeding.

Section 11.19(c) is added to set forth the manner for handling petitions to disqualify a practitioner. This section continues the present practice under former § 10.130(b).

Section 11.19(d) is added to provide for the OED Director to refer the existence of circumstances suggesting unauthorized practice of law to the authorities in the appropriate jurisdiction(s).

Section 11.20:

Section 11.20 is added to set forth the disciplinary sanctions the USPTO Director may impose on a practitioner after notice and opportunity for a hearing, as well as to set forth transfer to disability inactive status. Section 11.20(a)(2) provides for exclusion from practice before the Office. Suspension may be imposed for a period that is appropriate under the facts and circumstances of the case. Section 11.20(a)(3) provides for reprimand, including both public and private reprimand.

Section 11.20(a)(4) provides for probation

in lieu

of or in addition to any other disciplinary sanction. The order imposing probation sets forth in writing the conditions of probation as well as whether, and to what extent, the practitioner is required to notify clients of the probation. The order also establishes procedures for the supervision of probation. Violation of any condition of probation is cause for the probation to be revoked, and the disciplinary sanction to be imposed for the remainder of the probation period. Revocation of probation occurs after an order to show cause why probation should not be revoked is resolved adversely to the practitioner.

Section 11.20(b) is added to provide that the USPTO Director may require a practitioner to make restitution either to persons financially injured by the practitioner's conduct or to an appropriate client's security trust fund, or both, as a condition of probation or of reinstatement. The restitution is limited to the return of unearned practitioner fees or misappropriated client funds. The rule does not contemplate restitution for the value of an invention or patent.

Section 11.20(c) is added to set forth transfer to disability inactive status. This section provides that the USPTO Director may, after notice and opportunity for a hearing, and where grounds exist to believe a practitioner has been transferred to disability inactive status in another jurisdiction, or has been judicially declared incompetent; judicially ordered to be involuntarily committed after a hearing on the grounds of incompetency or disability, or placed by court order under guardianship or conservatorship, transfer the practitioner to disability inactive status.

Section 11.21:

Section 11.21 is added to codify the practice of issuing warnings. This section provides that a warning is not a disciplinary sanction. This section also provides that the “OED Director may conclude an investigation with the issuance of a warning,” which “shall contain a brief statement of facts and imperative USPTO Rules of Professional Conduct relevant to the facts.” Inasmuch as a warning is not a disciplinary sanction, a warning would not be made public.

Section 11.22:

Section 11.22 is added to set forth provisions regarding the conduct of investigations of possible grounds for discipline. Section 11.22(a) authorizes the OED Director to investigate possible grounds for discipline. This section provides that an investigation may be initiated when the OED Director receives a grievance, information or evidence from any source suggesting possible grounds for discipline. The section further provides that neither unwillingness nor neglect by a grievant to prosecute a charge, nor settlement, compromise, or restitution with the grievant, shall in itself justify abatement of an investigation.

Section 11.22(b) provides for reporting information or evidence concerning possible grounds for discipline to the OED Director. Any person possessing information or evidence concerning possible grounds for discipline of a practitioner may report the information or evidence to the OED Director, who may request that the report be presented in the form of an affidavit or declaration.

Section 11.22(c) provides that information or evidence coming from any source that presents or alleges facts suggesting possible grounds for discipline of a practitioner will be deemed a grievance.

Section 11.22(d) provides for preliminary screening of information or evidence. This section provides that the “OED Director shall examine all information or evidence concerning possible grounds for discipline of a practitioner.”

Section 11.22(e) provides for notifying a practitioner of an investigation. The section provides that the “OED Director shall notify the practitioner in writing of the initiation of an investigation into whether a practitioner has engaged in conduct constituting possible grounds for discipline.”

Section 11.22(f) provides for the OED Director requesting information and evidence in the course of an investigation. Subsection 11.22(f)(1) provides that in the course of conducting an investigation, the OED Director may request information or evidence regarding possible grounds for discipline of a practitioner from the grievant, the practitioner, or any person who may reasonably be expected to provide information and evidence needed in connection with the grievance or investigation.

Subsection 11.22(f)(2) provides that the OED Director may request information and evidence regarding possible grounds for discipline of a practitioner from a non-grieving client either after obtaining the consent of the practitioner or upon a finding by a Contact Member of the Committee on Discipline, appointed in accordance with § 11.23(d), that good cause exists to believe that the possible ground for discipline alleged has occurred with respect to non-grieving clients. This section further provides that “[n]either a request for, nor disclosure of, such information shall constitute a violation of any of the Mandatory Disciplinary Rules identified in § 10.20(b) of Part 10 of this Subsection.”

Section 11.22(g) provides where the OED Director makes a request under paragraph (f)(2) of this section to the Contact Member of the Committee on Discipline, the Contact Member will not, with respect to the practitioner connected to the OED Director's request, participate in the Committee on Discipline panel that renders a probable cause decision.

Section 11.22(h) sets forth the actions the OED Director may take upon the conclusion of an investigation. The OED Director may close an investigation without issuing a warning or taking disciplinary action, issue a warning to the practitioner, institute formal charges upon approval of the Committee on Discipline, or enter into a settlement agreement with the practitioner and submit the same for approval to the USPTO Director.

Section 11.22(i) provides for closing investigation without issuing a warning or taking disciplinary action. There are four circumstances under this section when the OED Director must terminate an investigation and decline to refer a matter to the Committee on Discipline. Under § 11.22(i)(1), the OED Director closes an investigation without issuing a warning or disciplinary action upon determining that either the information or evidence is unfounded. Under

§ 11.22(i)(2), the OED Director closes the investigation without issuing a warning or taking disciplinary action when it is determined that the information or evidence relates to matters not within the jurisdiction of the Office. Under § 11.22(i)(3), the OED Director closes the investigation without issuing a warning or taking disciplinary action upon determining that as a matter of law, the conduct about which information or evidence has been obtained does not constitute grounds for discipline, even if the conduct may involve a legal dispute. Under § 11.22(i)(2)(4), the OED Director closes the investigation without issuing a warning or taking disciplinary action when the available evidence is insufficient to conclude that there is probable cause to believe that grounds exist for discipline.

Section 11.23:

Section 11.23 is added to provide for a Committee on Discipline. Section 11.23(a) provides for the Committee to be appointed by the USPTO Director. The Committee on Discipline consists of at least three employees of the Office, and none of the Committee members are permitted to report directly or indirectly to the OED Director or any employee designated by the USPTO Director to decide disciplinary matters. This section further provides that each Committee member must be a member in good standing of the bar of the highest court of a State. The Committee members select a Chairperson from among themselves. Three Committee members constitute a panel of the Committee.

Section 11.23(b) sets forth the powers and duties of the Committee on Discipline. The Committee is empowered and has the duty to meet in panels at the request of the OED Director and, after reviewing evidence presented by the OED Director, by majority vote of the panel, determine whether there is probable cause to bring charges under § 11.32 against a practitioner; and to prepare and forward its own probable cause findings and recommendations to the OED Director.

Section 11.23(c) provides that no discovery is authorized of, and no member of the Committee may be required to testify about deliberations of, the Committee or of any panel.

Section 11.24:

Section 11.24 is added to provide procedures for reciprocal discipline of a practitioner. Section 11.24(a) provides that a practitioner who is subject to the disciplinary jurisdiction of the Office and has been publicly censured, publicly reprimanded, subjected to probation, disbarred or suspended in another jurisdiction, or has been disciplinarily disqualified from participating in or appearing before any Federal program or agency shall notify the OED Director in writing of the same. This section also provides that a practitioner is deemed to be disbarred if he or she is disbarred, excluded on consent, or has resigned in lieu of a disciplinary proceeding.

Section 11.24(a) further provides for the OED Director, upon receiving notification that a practitioner subject to the disciplinary jurisdiction of the Office has been disciplined, to obtain a certified copy of the record or order regarding the public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification and file the same with the USPTO Director. The information received by the OED Director may come from any source, and therefore, the actions by OED Director are independent of whether the practitioner has self-reported. Without Committee on Discipline authorization, the OED Director can file a complaint complying with § 11.34 with the USPTO Director against the practitioner predicated upon the public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification, and request the USPTO Director to issue a notice and order as set forth in § 11.24(b).

Under § 11.24(a) regarding a practitioner who has been disqualified from participating in or appearing before any Federal program or agency, the program or agency need not use the term “disqualified” to describe the action. For example, an agency may use analogous terms, such as “suspend,” “decertify,” “exclude,” “expel,” or “debar” to describe the practitioner's disqualification from participating in the program or the agency.

Section 11.24(b) provides a procedure for initiating a reciprocal disciplinary proceeding. Under this section, the USPTO Director, upon receipt of a certified copy of the record or order regarding the practitioner, issues a notice directed to the practitioner in accordance with § 11.35 and to the OED Director. The notice includes (1) a copy of the record or order regarding the public censure, public reprimand, probation, disbarment, suspension, or disciplinary disqualification; (2) a copy of the complaint; and (3) an order directing the practitioner to file a response with the USPTO Director and the OED Director, within forty days of the date of the notice, establishing a genuine issue of material fact predicated upon the grounds set forth in §§ 11.24(d)(1)(i) through (d)(1)(iv) that the imposition of the identical public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification would be unwarranted and the reasons for the claim. In conformity with the changes to § 11.24(a), “disciplined” has been changed to “censured, publicly reprimanded, subjected to probation, disbarred, suspended” in the first sentence of this section; “public censure, public reprimand, probation,” has been added to § 11.24(b)(1); and “publicly censured, publicly reprimanded, placed on probation,” has been added to § 11.24(b)(3)(i).

Section 11.24(c) sets forth the effect of a stay in another jurisdiction on a reciprocal disciplinary proceeding occurring in the Office. Under this section, if the discipline imposed by another jurisdiction, probation or disciplinary disqualification imposed in the Federal program or agency has been stayed, any reciprocal discipline imposed by the USPTO may be deferred until the stay expires. In conformity with the changes to § 11.24(a), “discipline” has been changed to “censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification” in § 11.24(c).

Section 11.24(d) provides for a hearing and imposition of discipline. Under this section the USPTO Director hears the matter on the documentary record and imposes the identical discipline unless the USPTO Director determines that there is a genuine issue of material fact of the nature set forth in §§ 11.24(d)(1)(i) through (iv). In conformity with the changes to § 11.24(a), each occasion of “discipline” has been changed to “censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification” in the second sentence of this section.

The situation identified in § 11.24(d)(1)(i) is that the procedure elsewhere was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process. The situation identified in § 11.24(d)(1)(ii) is that there was such infirmity of proof establishing the conduct as to give rise to the clear conviction that the Office could not, consistently with its duty, accept as final the conclusion on that subject. The situation in § 11.24(d)(1)(iii) is that the imposition of the same discipline by the Office would result in grave injustice. The situation in § 11.24(d)(1)(iv) is that the practitioner was not the person involved in the prior disciplinary matter. In conformity with the changes to § 11.24(a), “discipline” has been changed to “censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification” in § 11.24(d)(1)(iii).

Under § 11.24(d)(2), if the USPTO Director determines that there is no genuine issue of material fact, the USPTO Director enters an appropriate final order. If the USPTO Director is unable to make such a determination because there is a genuine issue of material fact, the complaint is referred to a hearing officer for disposition and the practitioner is directed to file an answer to the complaint.

Section 11.24(e) provides for the effect of the adjudication in another jurisdiction or Federal agency or program. This section sets forth that a final adjudication in another jurisdiction or Federal agency or program that a practitioner, whether or not admitted in that jurisdiction, has been guilty of misconduct shall establish a

prima facie

case for discipline or probation for purposes of a disciplinary proceeding in this Office. In conformity with the changes to § 11.24(a), “discipline” has been changed to “censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification” in this section.

Section 11.24(f) sets forth the only circumstance when reciprocal discipline may be imposed

nunc pro tunc.

This section provides for imposing reciprocal discipline only upon the practitioner's request and only if the practitioner promptly notified the OED Director of his or her censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification in another jurisdiction, and establishes by clear and convincing evidence that the practitioner voluntarily ceased all activities related to practice before the Office and complied with all provisions of § 11.58. This section further provides that the effective date of any censure, public reprimand, probation, disbarment, suspension, or disciplinary disqualification imposed

nunc pro tunc

shall be the date the practitioner voluntarily ceased all activities related to practice before the Office and complied with all provisions of § 11.58. In conformity with the changes to § 11.24(a), “discipline” has been changed to “censure, public reprimand, probation, disbarment, suspension” in the first sentence. In conformity with the changes to § 11.24(a), in the second sentence, “censure, public reprimand, probation,” has been inserted before “suspension”; a comma has been inserted after “suspension”; “or” has been inserted between “suspension” and “disbarment”; and “or disciplinary disqualification” has been added after “disbarment.”

Section 11.24(g) provides for reinstatement following a reciprocal discipline proceeding. Under this section, a practitioner may petition for reinstatement under conditions set forth in § 11.60 no sooner than completion of the period of reciprocal discipline imposed, and compliance with all provisions of § 11.58.

Section 11.25:

Section 11.25 is added to provide a procedure for interim suspension and discipline, after notice and opportunity for a hearing on the documentary record, based upon conviction of committing a serious crime. The first sentence of § 11.25(a) provides that upon being convicted of a crime in a court of the United States, any state, or a foreign country, a practitioner subject to the disciplinary jurisdiction of the Office shall notify the OED Director in writing of the same within thirty days from the date of such conviction. If the crime is not a serious crime, the OED Director processes the matter in the same manner as any other information or evidence of a possible violation of the Mandatory Disciplinary Rules identified in § 10.20(b) of Part 10. The reference to the Mandatory Disciplinary Rules of Part 10 will obtain until such time as the Rules of Professional Conduct are adopted, at which time this section will be amended to reference the imperative Rules of Professional Conduct.

The second sentence of § 11.25(a) provides that the OED Director, upon being advised or learning that a practitioner subject to the disciplinary jurisdiction of the Office has been convicted of a crime, must make a preliminary determination whether the crime constitutes a serious crime warranting interim suspension. The third sentence of § 11.25(a) provides that where the crime is a serious crime, the OED Director will file with the USPTO Director proof of the conviction and request that the USPTO Director issue a notice and order as set forth in § 11.25(b)(2) of this section. The fourth sentence of § 11.25(a) provides that the OED Director must also, without Committee on Discipline authorization, file with the USPTO Director a complaint against the practitioner complying with § 11.34, predicated upon the conviction of a serious crime. The fifth sentence of § 11.25 provides that in the event the crime is not a serious crime, the OED Director must process the matter in the same manner as any other information or evidence of a possible violation of an imperative Rule of Professional Conduct coming to the attention of the OED Director.

Section 11.25(b) provides a procedure for imposing interim suspension and referral for disciplinary proceeding in the case of a practitioner convicted of a serious crime. Section 11.25(b)(1) provides that the USPTO Director has authority to place a practitioner on interim suspension, after a hearing on the documentary record.

Section 11.25(b)(2) provides for notifying the practitioner convicted of commission of a serious crime with notice of the proceeding. The USPTO Director issues a notice to the practitioner in accordance with § 11.35(a), (b) or (c), and to the OED Director. The notice contains a copy of the court record, docket entry, or judgment of conviction; a copy of the complaint; and an order directing the practitioner to inform the USPTO Director and OED Director, within thirty days of the date of the notice, of any genuine issue of material fact that the crime did not constitute a serious crime, that the practitioner is not the individual found guilty of the crime, or that the conviction was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process.

Section 11.25(b)(3) provides procedures for a hearing on and entry of a final order on the OED Director's request for interim suspension. The request for interim suspension is heard by the USPTO Director on the documentary record unless the USPTO Director determines that the practitioner's response establishes a genuine issue of material fact that the crime did not constitute a serious crime, the practitioner is not the person who committed the crime, or the conviction was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process. If the USPTO Director determines that there is no genuine issue of material fact regarding those defenses an appropriate final order is entered regardless of the pendency of any criminal appeal. Conversely, if the USPTO Director is unable to make such determination because there is a genuine issue of material fact, the USPTO Director would enter a final order dismissing the request for interim suspension and referring the complaint to a hearing officer for a hearing. Under the latter circumstances, the USPTO Director would also direct the practitioner to file an answer to the complaint in accordance with § 11.36. Section 11.25(b)(4) provides the USPTO Director with authority to terminate an interim suspension when it is in the interest of justice, and upon a showing of extraordinary circumstances, after affording the OED Director an opportunity to respond to the request to terminate interim suspension.

Section 11.25(b)(5) provides a procedure whereby the USPTO Director, upon entering an order for interim suspension, refers the complaint to the OED Director for institution of a formal disciplinary proceeding for an initial decision recommending the final disciplinary sanction to be imposed. The hearing officer, however, shall stay the disciplinary proceeding until all direct appeals from the conviction are concluded. Review of the initial decision of the hearing officer shall be pursuant to § 11.55.

Section 11.25(c) sets forth the standard for proving conviction and guilt. Section 11.25(c)(1) addresses conviction in the United States. Under this section, for purposes of a hearing for interim suspension and a hearing on the formal charges in a complaint filed as a consequence of the conviction, a certified copy of the court record, docket entry, or judgment of conviction in a court of the United States or any state establishes a

prima facie

case by clear and convincing evidence that the practitioner was convicted of the crime and that the conviction was not lacking in due process. Section 11.25(c)(2) addresses conviction in a foreign country. For purposes of a hearing for interim suspension and on the formal charges filed as a result of a finding of guilt, a certified copy of the court record, docket entry, or judgment of conviction in a court of a foreign country establishes a prima facie case by clear and convincing evidence that the practitioner was convicted of the crime and that the conviction was not lacking in due process. Nothing in this section precludes the practitioner from demonstrating in any hearing for interim suspension that there is a genuine issue of material fact to be considered when determining if the elements of a serious crime were committed in violating the criminal law of the foreign country and whether a disciplinary sanction should be entered.

Section 11.25(d) provides that if the USPTO Director determines that the crime is not a serious crime, the complaint is to be referred to the OED Director for investigation under § 11.22 and appropriate processing.

Section 11.25(e) provides a procedure for reinstatement upon reversal or setting aside a finding of guilt or a conviction. Under § 11.25(e)(1), if the practitioner demonstrates that the underlying finding of guilt or conviction of serious crimes has been reversed or vacated, the order for interim suspension is to be vacated and the practitioner be placed on active status unless the finding of guilt was reversed or the conviction was set aside with respect to less than all serious crimes for which the practitioner was found guilty or convicted. Vacating the interim suspension does not terminate any other disciplinary proceeding then pending against the practitioner, the disposition of which is determined by the hearing officer on the basis of all available evidence other than the finding of guilt or conviction. Section 11.25(e)(2) sets forth the reinstatement procedure for a practitioner convicted of a serious crime. The practitioner petitions for reinstatement under conditions set forth in § 11.60 no sooner than five years after being discharged following completion of service of his or her sentence, or after completion of service under probation or parole, whichever is later.

Section 11.25(f), which pertains to notifying clients and others of a practitioner's interim suspension, by providing that an interim suspension under this section constitutes a suspension of the practitioner for the purpose of § 11.58. Therefore, the practitioner must notify clients and others in accordance with § 11.58.

Section 11.26:

Section 11.26 is added to introduce provisions for settlement in disciplinary matters. Under this section a settlement conference may occur between the OED Director and the practitioner before or after a complaint is filed under § 11.34. Any offers of compromise and any statements made during the course of settlement discussions are not admissible in subsequent proceedings. The OED Director may recommend to the USPTO Director any settlement terms deemed appropriate, including steps taken to correct or mitigate the matter forming the basis of the action, or to prevent recurrence of the same or similar conduct. A settlement agreement is effective only upon entry of a final decision by the USPTO Director.

Section 11.27:

Section 11.27 is added to provide a procedure for excluding a practitioner on consent. Section 11.27(a) provides that a practitioner who is the subject of an investigation or a pending disciplinary proceeding based on allegations of grounds for discipline, and who desires to resign, may only do so by consenting to exclusion and delivering to the OED Director an affidavit declaring the consent of the practitioner to exclusion. The content of the affidavit is set forth in §§ 11.27(a)(1)(i) through 11.27(a)(3)(ii). Section 11.27(b) provides a procedure for the USPTO Director to review, and if appropriate, approve the exclusion on consent. Upon approval, the USPTO Director enters an order excluding the practitioner on consent and providing other appropriate actions. Upon entry of the order, the excluded practitioner must comply with the requirements set forth in § 11.58. Under § 11.27(c), when an affidavit under § 11.27(a) is received after a complaint under § 11.34 has been filed, the OED Director notifies the hearing officer. The hearing officer then enters an order transferring the disciplinary proceeding to the USPTO Director, who may enter an order excluding the practitioner on consent. Section 11.27(d) provides for reinstatement following exclusion on consent. Under this section, a practitioner excluded on consent under this section may not petition for reinstatement for five years. This section provides that an excluded practitioner who intends to reapply for admission to practice before the Office must comply with the provisions of § 11.58, and apply for reinstatement in accordance with § 11.60. This section provides that failure to comply with the provisions of § 11.58 constitutes grounds for denying an application for reinstatement.

Section 11.28:

Section 11.28 is added to provide procedures for addressing disciplinary proceedings involving an incapacitated practitioner. Section 11.28(a) provides a procedure for holding a disciplinary procedure in abeyance because of a practitioner's incapacitation due to a current disability or addiction. Under § 11.28(a)(1), in the course of a disciplinary proceeding, before the date set for a hearing, the practitioner may file a motion requesting the hearing officer to enter an order holding such proceeding in abeyance based on the contention that the practitioner is suffering from a disability or addiction that makes it impossible for the practitioner to adequately defend the charges in the disciplinary proceeding. The required content of the motion is set forth in § 11.28(a)(1)(i). The time for filing and serving the OED Director's response, and the content of the response are set forth in § 11.28(a)(1)(ii). Section 11.28(a)(2) provides a procedure for disposition of the practitioner's motion. Upon granting the practitioner's motion, the OED Director transfers the practitioner to disability inactive status and publishes notice. The order may provide that, in the case of addiction to drugs or intoxicants, the practitioner will not be returned to active status absent satisfaction of specified conditions. Upon receipt of the order, the OED Director transfers the practitioner to disability inactive status, gives notice to the practitioner, causes notice to be published, and gives notice to appropriate authorities in the Office that the practitioner has been placed on

disability inactive status. The practitioner is required to comply with the provisions of § 11.58, and not engage in practice before the Office in patent, trademark and other non-patent law until a determination is made of the practitioner's capability to resume practice before the Office in a proceeding under §§ 11.28(c) or 11.28(d). A practitioner on disability inactive status must seek permission from the OED Director to seek employment authorized under § 11.58(e). Permission will be granted only if the practitioner has complied with all the conditions of §§ 11.58(a) through 11.58(d) applicable to disability inactive status. In the event that permission is granted, the practitioner must fully comply with the provisions of § 11.58(e).

Section 11.28(b) provides a procedure whereby a practitioner transferred to disability inactive status in a disciplinary proceeding may move for reactivation once a year beginning at any time not less than one year after the initial effective date of inactivation, or once during any shorter interval provided by the order issued pursuant to § 11.28(a)(2) or any modification thereof. If the motion is granted, the disciplinary proceeding is resumed under a schedule established by the hearing officer. Section 11.28(c) sets forth the content of the practitioner's motion for reactivation.

Section 11.28(d) provides a procedure whereby the OED Director may move to terminate a prior order holding a pending disciplinary proceeding in abeyance and resume a disciplinary proceeding. The OED Director bears the burden of showing by clear and convincing evidence that the practitioner is able to defend himself or herself, and the hearing officer will hold an evidentiary hearing if there is any genuine issue as to one or more material facts.

Section 11.28(e) provides for a hearing officer to take appropriate action if, in deciding a motion under § 11.28(b) or § 11.28(d), the hearing officer determines that there is good cause to believe the practitioner is not incapacitated from defending himself or herself, or is not incapacitated from practicing before the Office. The appropriate action may include entry of an order directing the reactivation of the practitioner and resumption of the disciplinary proceeding.

Section 11.29:

Section 11.29 is added to provide for reciprocal transfer or initial transfer to disability inactive status of practitioners. Section 11.29(a) provides for notification of the OED Director. Section 11.29(a)(1) addresses transfer to disability inactive status in another jurisdiction as grounds for reciprocal transfer by the Office. Within thirty days of being transferred to disability inactive status in another jurisdiction a practitioner subject to the disciplinary jurisdiction of the Office is required to notify the OED Director in writing of the transfer. Upon notification from any source that a practitioner subject to the disciplinary jurisdiction of the Office has been transferred to disability inactive status in another jurisdiction, the OED Director is required to obtain a certified copy of the order and file it with the USPTO Director together with a request that the practitioner be transferred to disability inactive status, including the specific grounds therefor, and a request that the USPTO Director issue a notice and order as set forth in § 11.29(b).

Section 11.29(a)(2) sets forth as grounds for initial transfer to disability inactive status, situations where a practitioner has been involuntarily committed, there is an adjudication of incompetency, or there is a court-ordered placement of a practitioner under guardianship or conservatorship. Within thirty days of being judicially declared incompetent, being judicially ordered to be involuntarily committed after a hearing on the grounds of incompetency or disability, or being placed by court order under guardianship or conservatorship in another jurisdiction, a practitioner subject to the disciplinary jurisdiction of the Office must notify the OED Director in writing of the transfer. Upon notification from any source that a practitioner subject to the disciplinary jurisdiction of the Office has been transferred to disability inactive status in another jurisdiction, the OED Director is required to obtain a certified copy of the order and file it with the USPTO Director along with the requests described in 11.29(a)(1).

Section 11.29(b) provides for serving notice on a practitioner to show cause why transfer to disability inactive status should not occur. The OED Director issues the notice, comporting with § 11.35, directed to the practitioner upon receiving the information and requests from the OED Director. The notice contains a copy of the order or declaration from the other jurisdiction. The notice also contains an order directing the practitioner to inform the USPTO Director and OED Director, within 30 days from the date of the notice, a) his or her response to the OED Director's request to transfer to disability status which shall establish any genuine issue of material fact supported by affidavit based on the grounds set forth in § 11.29(d) (1) through (4) that the transfer to disability inactive status would be unwarranted and the reasons therefor.

Section 11.29(c) addresses the effect of stay of transfer or of a stay of a judicially declared incompetence, judicially ordered involuntary commitment on the grounds of incompetency or disability, or court-ordered placement under guardianship or conservatorship. This section provides that in the event the transfer, judicially declared incompetence, judicially ordered involuntary commitment on the grounds of incompetency or disability, or court-ordered placement under guardianship or conservatorship in the other jurisdiction has been stayed, any reciprocal transfer or transfer by the Office may be deferred until the stay expires.

Section 11.29(d) provides for a hearing and transfer to disability inactive status. The request for transfer to disability inactive status shall be heard by the USPTO Director on the documentary record unless the USPTO Director determines that there is a genuine issue of material fact, in which case the USPTO Director may deny the request. Upon the expiration of 30 days from the date of the notice pursuant to the provisions of § 11.29(b), the USPTO Director shall consider any timely filed response and impose the identical transfer to disability inactive status unless the practitioner demonstrates by clear and convincing evidence and the USPTO Director finds there is a genuine issue of material fact by clear and convincing evidence that: (1) The procedure was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process; (2) there was such infirmity of proof establishing the transfer to disability status, judicial declaration of incompetence, judicial order for involuntary commitment on the grounds of incompetency or disability, or placement by court order under guardianship or conservatorship that the USPTO Director could not, consistent with the Office's duty, accept as final the conclusion on that subject; (3) the imposition of the same disability status or transfer to disability status by the USPTO Director would result in grave injustice; or (4) the practitioner is not the individual transferred to disability status, judicially declared incompetent, judicially ordered for involuntary commitment on the grounds of incompetency or disability, or placed by court order under guardianship or conservatorship.

One example that it would be a grave injustice to impose disability status or

transfer to disability status might be that the reason no longer exists for the original transfer to disability inactive status, judicial declaration of incompetence, judicial order to be involuntarily committed on the grounds of incompetency or disability, or placement by court order under guardianship or conservatorship. A further example would be that the practitioner was not the person transferred to disability inactive status, judicially declared incompetent, judicially ordered to be involuntarily committed on the grounds of incompetency or disability, or placed by court order under guardianship or conservatorship. If the USPTO Director determines that there is no genuine issue of material facts with regard to any of the elements of §§ 11.29 (d)(1) through (4), the USPTO Director shall enter an appropriate final order. If the USPTO Director is unable to make that determination because there is a genuine issue of material fact, the USPTO Director shall enter an appropriate order dismissing the OED Director's request for such reason.

Section 11.29(e) provides for the effect of adjudication in other jurisdictions. This section provides that in all other aspects, a final adjudication in another jurisdiction that a practitioner is transferred to disability inactive status, is judicially declared incompetent, is judicially ordered to be involuntarily committed on the grounds of incompetency or disability, or is placed by court order under guardianship or conservatorship establishes the disability for purposes of a reciprocal transfer to or transfer to disability status before the Office.

Section 11.29(f) provides that a practitioner who is transferred to disability inactive status under this section shall be deemed to have been refused recognition to practice before the Office so that the agency's final order may be reviewed under 35 U.S.C. 32.

Section 11.29(g) provides for an order imposing reciprocal transfer to disability inactive status or order imposing initial transfer to disability inactive status. Under this section, an order by the USPTO Director imposing reciprocal transfer to disability inactive status, or transferring a practitioner to disability inactive status is effective immediately for an indefinite period until further order of the USPTO Director. A copy of the order transferring a practitioner to disability inactive status is served upon the practitioner, the practitioner's guardian, and/or the director of the institution to which the practitioner has been committed in the manner the USPTO Director may direct. A practitioner reciprocally transferred or transferred to disability inactive status must comply with the provisions of § 11.58, and must not engage in practice before the Office in patent, trademark and other non-patent law unless and until reinstated to active status.

Section 11.29(h) provides for confidentiality of the proceeding and that orders transferring a practitioner to disability status be public. Under § 11.29(h)(1) all proceedings under § 11.29 involving allegations of disability of a practitioner are kept confidential unless and until the USPTO Director enters an order reciprocally transferring or transferring the practitioner to disability inactive status. Under § 11.29(h)(2), the OED Director must publicize any reciprocal transfer to disability inactive status or transfer to disability inactive status in the same manner as for the imposition of public discipline.

Section 11.29(i) addresses activities provided for under § 11.58(e) of practitioners on disability inactive status. A practitioner on disability inactive status must seek permission from the OED Director to engage in an activity authorized under § 11.58(e). Permission will be granted only if the practitioner has complied with all the conditions of §§ 11.58(a) through 11.58(d) applicable to disability inactive status. In the event that permission is granted, the practitioner must fully comply with the provisions of § 11.58(e).

Section 11.29(j) provides for reinstatement from disability inactive status. Section 11.29(j)(1) provides that no practitioner reciprocally transferred or transferred to disability inactive status under § 11.29 may resume active status except by order of the OED Director. Section 11.29(j)(2) provides that a practitioner reciprocally transferred or transferred to disability inactive status is entitled to petition the OED Director for transfer to active status once a year, or at whatever shorter intervals the USPTO Director may direct in the order transferring or reciprocally transferring the practitioner to disability inactive status or any modification thereof. Section 11.29(j)(3) provides that upon the filing of a petition for transfer to active status, the OED Director may take or direct whatever action is deemed necessary or proper to determine whether the incapacity has been removed, including a direction for an examination of the practitioner by qualified medical or psychological experts designated by the OED Director. The expense of the examination is paid and borne by the practitioner. Section 11.29(j)(4) provides that with the filing of a petition for reinstatement to active status, the practitioner will be required to disclose the name of each psychiatrist, psychologist, physician and hospital or other institution by whom or in which the practitioner has been examined or treated since the transfer to disability inactive status. The practitioner must furnish the OED Director with written consent for the release of information and records relating to the incapacity if requested by the OED Director. Section 11.29(j)(5) provides that the OED Director may direct that the practitioner establish proof of competence and learning in law, which proof may include passing the registration examination. Section 11.29(j)(6) provides that the OED Director shall grant the petition for transfer to active status upon a showing by clear and convincing evidence that the incapacity has been removed. Section 11.29(j)(7) provides that if a practitioner reciprocally transferred to disability inactive status on the basis of a transfer to disability inactive status in another jurisdiction, the OED Director may dispense with further evidence that the disability has been removed and may immediately direct reinstatement to active status upon such terms as are deemed proper and advisable. Section 11.29(j)(8) provides that if a practitioner transferred to disability inactive status on the basis of a judicially declared incompetence, judicially ordered involuntary commitment on the grounds of incompetency or disability, or court-ordered placement under guardianship or conservatorship has been declared to be competent, the OED Director may dispense with further evidence that the incapacity to practice law has been removed and may immediately direct reinstatement to active status.

Sections 11.30 through 11.31:

Sections 11.30 through 11.31 are reserved.

Section 11.32:

Section 11.32 is added to provide a procedure for instituting a disciplinary proceeding. Section 11.32, in essence, continues the provisions of former § 10.132, except as noted in the following discussion. Section 11.32(a) authorizes the OED Director to convene a meeting of “a panel of the Committee on Discipline,” as opposed to a “meeting of the Committee on Discipline” provided for in former § 10.132, and § 11.32(a) provides that the meeting may be convened after an investigation is conducted and after complying, where necessary, with the provisions of 5 U.S.C. 558(c), if “the OED Director is of the opinion that grounds exist for discipline under

§ 11.19(b)(3)-(5).” The panel of the Committee then determines as specified in § 11.23(b) whether a disciplinary proceeding shall be instituted.

Section 11.33:

Section 11.33 is reserved.

Section 11.34:

Section 11.34 is added to provide for the content and sufficiency of a complaint. Section 11.34, in essence, continues the provisions of former § 10.134, except as noted in the following discussion. Section 11.34(a)(2) provides that the complaint must give a plain and concise description of the respondent's “alleged grounds for discipline” instead of the “alleged violations of the Disciplinary Rules by the practitioner” found in former § 10.134(a)(2). Section 11.34(a)(3) adds a provision that the complaint state the time “not less than thirty days from the date the complaint is filed” for respondent to file an answer.

Section 11.34(b) provides that the complaint will be deemed sufficient if it fairly informs the respondent of “any grounds for discipline, and where applicable, Mandatory Disciplinary Rules identified in § 10.20(b) of Part 10 of this Subsection that form the basis for the disciplinary proceeding,” whereas former § 10.134(b) provided that the complaint must fairly inform the respondent of “any violation of the Disciplinary Rules which form the basis for the disciplinary proceeding.” The reference to the Mandatory Disciplinary Rules of Part 10, instead of the imperative Rules of Professional Conduct, will obtain until such time as the Rules of Professional Conduct are adopted, at which time reference will be made to the imperative Rules of Professional Conduct. Section 11.34(c) adds a provision that “[t]he complaint shall be filed in the manner prescribed by the USPTO Director.”

Section 11.35:

Section 11.35 is added to provide for service of the complaint. Section 11.35, in essence, continues the provisions of former § 10.135, except as noted in the following discussion. Section 11.35(a)(2) provides for serving a complaint on a respondent by mailing a copy of the paper by “other delivery service” to respondent. The use of “other delivery service that provides the ability to confirm delivery or attempted delivery,” in addition to first class mail and “Express Mail,” recognizes additional delivery services not recognized when former § 10.135 was adopted. Section 11.35(a)(4) adds a provision for delivery of a complaint “[i]n the case of a respondent who resides outside the United States, by sending a copy of the complaint by any delivery service that provides ability to confirm delivery or attempted delivery, to: (i) [a] respondent who is a registered practitioner at the address provided to OED pursuant to § 11.11; or (ii) [a] respondent who is a nonregistered practitioner at the last address for the respondent known to the OED Director.” Unlike the provision of former § 10.135(b), § 11.35 does not require a second attempt to serve the complaint by any one of the procedures in § 11.35(a) before service is effected by publication. Section 11.35(b) provides for service by publication “for two consecutive weeks,” instead of the “four consecutive weeks” required by former § 10.135(b), and the time for filing an answer is set at “thirty days from the second publication of the notice.” Section 11.35(b) also provides that “[f]ailure to timely file an answer will constitute an admission of the allegations in the complaint in accordance with paragraph (d) of § 11.36, and the hearing officer may enter an initial decision on default.” Section 11.35(c), which addresses serving a copy of a complaint on the attorney known to represent a respondent, provides that service on the attorney is in lieu of service on the respondent in the manner provided for in sections 11.35(a) or (b).

Section 11.35(b) provides a procedure for accomplishing service if a copy of the complaint cannot be delivered to the respondent through any one of the procedures in § 11.35(a). In these circumstances, the OED Director serves the respondent by causing an appropriate notice to be published in the Official Gazette for two consecutive weeks, in which case, the time for filing an answer shall be thirty days from the second publication of the notice. Section 11.35(b) provides that failure to timely file an answer will constitute an admission of the allegations in the complaint in accordance with § 11.36(d), and the hearing officer may enter an initial decision on default.

Section 11.35(c) provides that if the respondent is known to the OED Director to be represented by an attorney under § 11.40(a), a copy of the complaint is to be served on the attorney in lieu of the respondent in the manner provided for in § 11.35(a) or § 11.35(b).

Section 11.36:

Section 11.36 is added to provide for the respondent's answer to a complaint. Section 11.36, in essence, continues the provisions of former § 10.136, except as noted in the following discussion. Section 11.36(a) provides that the minimum thirty days for filing an answer runs “from the date the complaint is filed.”

In § 11.36(b), the first sentence provides that when filing the answer with the hearing officer, it is to be filed “at the address specified in the complaint.” In § 11.36(c), the third sentence requires respondent to state affirmatively any intent to raise a disability as a mitigating factor. The last three sentences in § 11.36(c) provide: that “if respondent intends to raise a special matter of defense or disability, the answer shall specify the defense or disability, its nexus to the misconduct, and the reason it provides a defense or mitigation”; that “a respondent who fails to do so cannot rely on a special matter of defense or disability”; and that “the hearing officer may, for good cause, allow the respondent to file the statement late, grant additional hearing preparation time, or make other appropriate orders.” Disability, such as mental disability or chemical dependency, including alcoholism or drug abuse, would be a mitigating factor only if the respondent practitioner makes an adequate showing of nexus and mitigation. Such a showing would be expected to include (1) medical evidence that the practitioner is affected by a chemical dependency or mental disability; (2) evidence that the chemical dependency or mental disability substantially caused the misconduct; (3) the practitioner's recovery from the chemical dependency or mental disability is demonstrated by a meaningful and sustained period of successful rehabilitation; (4) the recovery arrested the misconduct; and (5) recurrence of the misconduct is unlikely. These are substantially the same standards as those set forth Section 9.32(i) of the American Bar Association Standards for Imposing Lawyer Sanctions (1992). Section 11.36(d) provides that the hearing officer need receive no further evidence with respect to an allegation that is not denied by a respondent in the answer inasmuch as the allegation is deemed to be admitted and may be considered proven. Section 11.36(e) provides for entry of a default judgment if an answer is not timely filed.

Section 11.37:

Section 11.37 is reserved.

Section 11.38:

Section 11.38 is added to provide for a contested case. Section 11.38, in essence, continues the provisions of former § 10.138.

Section 11.39:

Section 11.39 is added to provide for a hearing officer, the appointment and responsibilities of the hearing officer, and review of a hearing officer's interlocutory orders and stays. Section 11.39, in essence, continues the provisions of former § 10.139, except as noted in the following discussion. Section 11.39(a), in addition to providing for the appointment of a

hearing officer by the USPTO Director under 5 U.S.C. 3105, also provides for a hearing officer appointed under 35 U.S.C. 32. The hearing officer conducts the disciplinary proceedings.

Section 11.39(b) provides that the hearing officer be independent of improper influence by requiring that the officer “not be subject to first level or second level supervision by the USPTO Director or his or her designee,” “not be subject to supervision of the person(s) investigating or prosecuting the case,” “not be an individual who has participated in any manner in the decision to initiate the proceedings,” and “not have been employed under the immediate supervision of the practitioner.” The hearing officer must be admitted to practice law and have suitable experience and training to conduct the hearing, reach a determination, and render an initial decision in an equitable manner. Section 11.39(b)(11) authorizes the hearing officer to impose against a party any of the sanctions provided in Rule 37(b)(2) of the Federal Rules of Civil Procedure in the event that said party or any attorney, agent or designated witness of that party fails to comply with a protective order made pursuant to § 11.44(c).

Section 11.39(c)(8) provides that the hearing officer has authority to adopt procedures and modify procedures for the orderly disposition of proceedings and sets forth a hearing officer's responsibilities. Section 11.39(c)(10) provides that the hearing officer has authority to promote not only the efficient and timely conduct of a disciplinary proceeding, but also to promote the impartiality of the proceeding.

Section 11.39(d) provides for the hearing officer issuing an initial decision “normally* * * within nine months of the date a complaint is filed,” instead of the six-month period used in former § 10.139(c). Section 11.39(d) provides for the initial decision issuing more than nine months after a complaint in the same circumstances contemplated by former § 10.139(c).

Section 11.39(f) provides that if the OED Director or a respondent seeks review of an interlocutory order of a hearing officer under § 11.39(b)(2), any time period set by the hearing officer for taking action shall not be stayed unless ordered by the USPTO Director or the hearing officer. The language appearing in proposed § 11.39(f), “any time period set by the hearing officer for taking action shall not be stayed” has been changed to “any time period set by the hearing officer for taking action shall not be stayed.” The hearing officer sets times for the OED Director and respondent to act under §§ 11.39(c)(5) and (c)(8), but not for the hearing officer to act. Accordingly, the language was changed sua sponte to conform to the hearing officer's recited responsibilities.

Section 11.39(g) prohibits the hearing officer from engaging in

ex parte

discussions with any party on the merits of the complaint, beginning with appointment and ending when the final agency decision is issued.

Section 11.40

is added to provide for representation of the respondent and the OED Director. Section 11.40(a), in essence, continues the provisions of former § 10.140(a). Section 11.40(b) provides for the OED Director to be represented by the Deputy General Counsel for Intellectual Property and Solicitor, and attorneys in the Office of the Solicitor. The attorneys representing the OED Director in disciplinary proceedings must not consult with the USPTO Director, the General Counsel, or the Deputy General Counsel for General Law regarding the proceeding. The General Counsel and the Deputy General Counsel for General Law must remain screened from the investigation and prosecution of all disciplinary proceedings in order that they be available as counsel to the USPTO Director in deciding disciplinary proceedings, unless access is appropriate to perform their duties. After a final decision is entered in a disciplinary proceeding, the OED Director and attorneys representing the OED Director shall be available to counsel the USPTO Director, the General Counsel, and the Deputy General Counsel for General Law in any further proceedings, for example, as they arise in a United States District Court or the United States Court of Appeals for the Federal Circuit.

Section 11.41:

Section 11.41 is added to provide for filing of papers. Section 11.41, in essence, continues the provisions of former § 10.141 except as noted in the following discussion. The first sentence of § 11.41(a) provides that the provisions of not only § 1.8, but also § 2.197, do not apply to disciplinary proceedings. The first sentence of former § 10.141 has been moved to be the second sentence of § 11.41(a). Section 11.41(b) provides that all papers filed after entry of an initial decision by the hearing officer are to be filed with the USPTO Director and that a copy of the paper shall be served on the OED Director. The provision of former § 10.141(c) has been moved to be the third sentence of § 11.41(b).

Section 11.42:

Section 11.42 is added to provide for service of papers other than a complaint in a disciplinary proceeding. Section 11.42, in essence, continues the provisions of former § 10.142 except as noted in the following discussion. Sections 11.42(a)(2) and 11.42(b)(2) provide for serving a paper on the respondent's attorney, or upon a respondent who is not represented, by mailing a copy of the paper by “other delivery service” to the attorney or the respondent. The use of “other delivery service,” in addition to first class mail and “Express Mail,” recognizes additional delivery services not recognized when former § 10.142 was adopted. Similarly, § 11.42(c)(2) provides for the respondent serving a paper on the representative of the OED Director by mailing a copy by “other delivery service.”

Section 11.43:

Section 11.43 is added to provide for motions. In essence, § 11.43 continues the provisions of former § 10.143.

Section 11.44:

Section 11.44 is added to provide for hearings in disciplinary proceedings. Except as noted in the following discussion, § 11.44, in essence, continues the provisions of former § 10.144. The third sentence of § 11.44(a) provides that the hearing officer will set the time and place for the hearing. In doing so, the hearing officer should normally give preference to a Federal facility in the district where the Office's principal office is located or Washington, DC, inasmuch as the practitioner is practicing before the Office. Nevertheless, the hearing officer should also give due regard to the convenience and needs of the parties, witnesses, or their representatives. The fifth sentence of § 11.44(a) provides that in cases involving an incarcerated respondent, any necessary oral hearing may be held at the location of incarceration. The seventh sentence of § 11.44(a) provides that the hearing be conducted as if the proceeding were subject to 5 U.S.C. 556. In some instances, such as when the OED Director and respondent reach a settlement, an oral hearing is unnecessary, and therefore, no oral hearing is conducted. The eighth sentence of § 11.44(a) provides that a copy of the transcript shall be provided to the OED Director and the respondent at the expense of the Office.

Section 11.44(b) provides that when the respondent to a disciplinary proceeding fails to appear at the hearing after a notice of hearing has been given by the hearing officer, the hearing officer may deem the respondent to have waived the right to a hearing and may proceed with the hearing in the absence of the respondent.

Section 11.44(c) provides that a hearing under this section will not be

open to the public except that the hearing officer may grant a request by a respondent to open his or her hearing to the public and make the record of the disciplinary proceeding available for public inspection,

provided,

a protective order is entered to exclude from public disclosure information which is privileged or confidential under applicable laws or regulations.

Section 11.45:

Section 11.45 is added to provide for amendment of pleadings. This section permits the OED Director to amend the complaint to include additional charges with the authorization of the hearing officer, but without authorization from the Committee on Discipline. The amended charges may be based upon conduct committed before or after the complaint was filed. If amendment of the complaint is authorized, the hearing officer must authorize amendment of the answer. To avoid prejudice by the amendments to any party, reasonable opportunity is given to meet the allegations in the complaint or answer as amended, and the hearing officer makes findings on any issue presented by the complaint or answer as amended.

Sections 11.46-11.48:

Sections 11.46-11.48 are reserved.

Section 11.49:

Section 11.49 is added to provide each party's burden of proof. This section, in essence, continues the provisions of former § 10.149.

Section 11.50:

Section 11.50 is added to provide for applicable rules of evidence. This section, in essence, continues the provisions of former § 10.150.

Section 11.50(c), which provides for discovery of government documents, in essence, continues the provisions for former § 10.150(c) and further specifies that the discovery “include[es], but [is] not limited to, all papers in the file of a disciplinary investigation,” which are admissible without extrinsic evidence of authenticity.

Section 11.51:

Section 11.51 is added to provide for the use of depositions. Except as noted in the following discussion, § 11.51, in essence, continues the provisions of former § 10.151. The last sentence in § 11.51(a), “[d]epositions may not be taken to obtain discovery, except as provided for in paragraph (b) of this section,” is not found in former § 10.151, and has been added to § 11.51(a) to preclude the use of depositions to obtain discovery that the hearing officer has not authorized.

Section 11.52:

Section 11.52 provides for discovery. Except as noted in the following discussion, § 11.52, in essence, continues the provisions of former § 10.152. Section 11.52, like former § 10.152, requires a party to establish that discovery is reasonable and relevant. However, § 11.52 does not specify that the party seeking discovery must do so “in a clear and convincing manner.” It is sufficient that the party establish that discovery is reasonable and relevant. Section 11.52(b)(1), unlike former § 10.152(b), does not prohibit reasonable and relevant discovery that will be used solely for cross-examination.

Section 11.53:

Section 11.53, which provides for proposed findings and conclusions as well as post-hearing memorandum, in essence continues the provisions of former § 10.153.

Section 11.54:

Section 11.54 provides for proposed findings and conclusions as well as post-hearing memoranda. Except as noted in the following discussion, § 11.54, in essence, continues the provisions of former § 10.154. To codify long-standing practice, § 11.54(a)(2) adds a provision specifically referencing inclusion of “an order of default judgment” in the decision, and for the hearing officer to transmit the entire record to the OED Director after issuing the decision. To improve efficiencies, § 11.52(a)(2) provides for the hearing officer to transmit a copy of the decision to the OED Director, instead of transmitting copies to both the OED Director and the OED Director's representative. To conform with the inclusion of “an order of default judgment” in the decision, the last sentence of § 11.52(a)(2) also provides that in the absence of an appeal to the USPTO Director, the decision of the hearing officer, including a default judgment, will, without further proceedings, become the decision of the USPTO Director thirty days from the date of the decision of the hearing officer. Section 11.54(b) provides that in determining any sanction after a finding that a practitioner has violated a ground for discipline, the following four factors must be considered if they are applicable: (1) Whether the practitioner has violated a duty owed to a client, to the public, to the legal system, or to the profession; (2) whether the practitioner acted intentionally, knowingly, or negligently; (3) the amount of the actual or potential injury caused by the practitioner's misconduct; and (4) the existence of any aggravating or mitigating factors.

Section 11.55:

Section 11.55 is added to provide a procedure for appealing a decision to the USPTO Director. While § 11.55, in essence, continues a number of the provisions of former § 10.155, numerous provisions have been added to clarify and codify procedures. For example, beginning with the second sentence, § 11.55(a) provides: that the “appeal shall include the appellant's brief;” that “[i]f more than one appeal is filed, the party who files the appeal first is the appellant for purpose of this rule;” “[i]f appeals are filed on the same day, the respondent is the appellant;” “[i]f an appeal is filed, then the OED Director shall transmit the entire record to the USPTO Director;” that “[a]ny cross-appeal shall be filed within fourteen days after the date of service of the appeal pursuant to § 11.42, or thirty days after the date of the initial decision of the hearing officer, whichever is later;” that “[t]he cross-appeal shall include the cross-appellant's brief;” that “[a]ny appellee or cross-appellee brief must be filed within thirty days after the date of service pursuant to § 11.42 of an appeal or cross-appeal;” and that “[a]ny reply brief must be filed within fourteen days after the date of service of any appellee or cross-appellee brief.”

Section 11.55(b) provides that an appeal or cross-appeal must include exceptions to the decisions of the hearing officer and supporting reasons for those exceptions, and that any exception not raised will be deemed to have been waived and will be disregarded by the USPTO Director in reviewing the initial decision.

Section 11.55(c) provides specific information regarding where briefs are filed, the content and arrangement of briefs, and paper size. Section 11.55(d) sets page limit lengths for briefs, as well as other requirements. Section 11.55(e) provides that the USPTO Director may refuse entry of a nonconforming brief. Section 11.55(g) proscribes filing further briefs or motions unless permitted by the USPTO Director. Section 11.55(i) provides that in the absence of an appeal by the OED Director, failure by the respondent to appeal under the provisions of this section shall be deemed to be both acceptance by the respondent of the initial decision and waiver by the respondent of the right to further administrative or judicial review.

Section 11.56:

Section 11.56 is added to provide for a decision of the USPTO Director. Section 11.56, in essence, continues the provisions of former § 10.156, except as noted in the following discussion. The second sentence of § 11.56(a) provides that the USPTO Director may, in addition to affirming, reversing or modifying the initial decision of the hearing officer, “remand the matter to the hearing officer for such further proceedings as the USPTO Director may deem appropriate.”

Section 11.56(b) provides that the final decision of the USPTO Director

may, in addition to the actions authorized in former § 10.156(b), reverse or modify the initial decision. This section also provides that a “final decision suspending or excluding a practitioner shall require compliance with the provisions of § 11.58;” and that the “final decision may also condition the reinstatement of the practitioner upon a showing that the practitioner has taken steps to correct or mitigate the matter forming the basis of the action, or to prevent recurrence of the same or similar conduct.”

Section 11.56(c) adds several provisions not set forth in former § 10.156. The respondent and the OED Director are limited to making a single request for reconsideration or modification of the decision by the USPTO Director, and the request must be filed within twenty days from the date of entry of the decision. No request for reconsideration or modification will be granted unless the request is based on newly discovered evidence or error of law or fact, and the requester must demonstrate that any newly discovered evidence could not have been discovered any earlier by due diligence. The request has the effect of staying the effective date of the order of discipline in the final decision. The decision by the USPTO Director is effective on its date of entry.

Section 11.57:

Section 11.57 is added to provide for review of the final decision of the USPTO Director. Section 11.57, in essence, continues the provisions of former § 10.157, except as noted in the following discussion. Section 11.57(a) provides that review of final decisions of the USPTO Director is available by petition filed in the United States District Court for the District of Columbia in accordance with the court's local rule. Section 11.57(a) draws the practitioner's attention to the necessity of serving the USPTO Director and complying with service requirements of Rule 4 of the Federal Rules of Civil Procedure and 37 CFR 104.2.

Section 11.57(b), unlike former § 10.156(b), provides that except for a request for reconsideration in § 11.56(c), “an order for discipline in a final decision will not be stayed except on proof of exceptional circumstances.”

Section 11.58:

Section 11.58 is added to set forth the duties of a disciplined or resigned practitioner. Section 11.58, in essence, continues the provisions of former § 10.158, except as noted in the following discussion. Section 11.58, in addition to referring to a practitioner who is excluded or suspended, also refers to practitioners who have resigned. Practitioners who resign are those addressed in § 11.11(e). Section 11.58(a) provides that an excluded, suspended or resigned practitioner will not be automatically reinstated at the end of his or her period of exclusion or suspension, that they must comply with the provisions of this section and §§ 11.12 and 11.60 to be reinstated, and that failure to comply with the provisions of this section may constitute both grounds for denying reinstatement or readmission and be cause for further action, including seeking further exclusion, suspension, and for revocation of any pending probation.

Section 11.58(b)(1)(i) requires the practitioner to file, within thirty days after the date of entry of the order of exclusion, suspension, or acceptance of resignation, a notice of withdrawal as of the effective date of the exclusion, suspension or acceptance of resignation in each pending patent and trademark application, each pending reexamination and interference proceeding, and every other matter pending in the Office, together with a copy of the notices sent pursuant to sections 11.58(b) and 11.58(c).

Section 11.58(b)(1)(iii) requires that the practitioner give notice to state and Federal jurisdictions and administrative agencies to which the practitioner is admitted to practice and clients “of the practitioner's consequent inability to act as a practitioner after the effective date of the order; and that, if not represented by another practitioner, the client should act promptly to substitute another practitioner, or to seek legal advice elsewhere, calling attention to any urgency arising from the circumstances of the case.” Section 11.58(b)(1)(iii) requires practitioners to “provide notice to the practitioner(s) for all opposing parties (or, to the parties in the absence of a practitioner representing the parties) in matters pending before the Office of the practitioner's exclusion, suspension or resignation and, that as a consequence, the practitioner is disqualified from acting as a practitioner regarding matters before the Office after the effective date of the suspension, exclusion or resignation, and state in the notice the mailing address of each client of the excluded, suspended or resigned practitioner who is a party in the pending matter.”

Section 11.58(b)(1)(iv) requires the practitioners to “deliver to all clients having immediate or prospective business before the Office in patent, trademark or other non-patent matters any papers or other property to which the clients are entitled, or shall notify the clients and any co-practitioner of a suitable time and place where the papers and other property may be obtained, calling attention to any urgency for obtaining the papers or other property.”

Section 11.58(b)(1)(v) requires practitioners to “relinquish to the client, or other practitioner designated by the client, all funds for practice before the Office, including any legal fees paid in advance that have not been earned and any advanced costs not expended.”

Section 11.58(b)(1)(vii) requires practitioners to “serve all notices required by paragraphs (b)(1)(ii) and (b)(1)(iii) of this section by certified mail, return receipt requested, unless mailed abroad. If mailed abroad, all notices shall be served with a receipt to be signed and returned to the practitioner.”

Section 11.58(b)(2) provides that within forty-five days after entry of the order of suspension, exclusion, or of acceptance of resignation, the practitioner must file with the OED Director an affidavit of compliance certifying that the practitioner has fully complied with the provisions of the order, § 11.58, and with Mandatory Disciplinary Rules identified in § 10.20(b) of Part 10 for withdrawal from representation. Appended to the affidavit of compliance must be copies of specified documents, a schedule regarding bank accounts in which the practitioner holds or held as of the entry date of the order any client, trust, or fiduciary funds for practice before the Office, a schedule describing the practitioner's disposition of all client and fiduciary funds for practice before the Office, proof of proper distribution of the funds and closing of the accounts, a list of all other state, Federal and administrative jurisdictions to which the practitioner is admitted to practice, and an affidavit providing information specified in § 11.58(b)(2)(vi).

Section 11.58(c) provides that after entry of the order of exclusion or suspension, or acceptance of resignation, the practitioner is proscribed from accepting any new retainer regarding immediate or prospective business before the Office, or engaging as a practitioner for another in any new case or legal matter regarding practice before the Office. The practitioner will be granted limited recognition for a period of thirty days. During the thirty-day period of limited recognition, the practitioner is to conclude work on behalf of a client on any matters that were pending before the Office on the date of entry of the order of exclusion or suspension, or acceptance of resignation. If such work cannot be concluded, the practitioner must so advise the client so that the client may make other arrangements.

Section 11.58(d) requires the practitioner to keep and maintain records of the various steps taken under § 11.58 so that proof of compliance with this section and with the exclusion or suspension order will be available in any subsequent proceeding. The OED Director will require the practitioner to submit such proof as a condition precedent to the granting of any petition for reinstatement.

Section 11.58(e) continues the practice under former § 10.158(c) for an excluded and suspended practitioner to act as a paralegal for another practitioner, and extending the practice to resigned practitioners and practitioners on disability inactive status.

Section 11.58(f) continues the practice under former § 10.158(d) proscribing reinstatement of excluded and suspended practitioners who act as a paralegal or perform services under § 11.58(e) unless they satisfy specified conditions, and extends the practice to resigned practitioners and practitioners on disability inactive status.

Section 11.59:

Section 11.59 is added to improve information dissemination to protect the public from disciplined practitioners. Section 11.59(a) provides for informing the public of the disposition of each matter in which public discipline has been imposed and of any other changes in a practitioner's registration status. Public discipline is identified as exclusion, including exclusion on consent, suspension, and public reprimand. In the usual circumstances, the OED Director would give notice of public discipline and the reasons for the discipline to disciplinary enforcement agencies in the state where the practitioner is admitted practice, to courts where the practitioner is known to be admitted, and the public. The final decision of the USPTO Director would be published if public discipline is imposed. A redacted version of the final decision would be published if a private reprimand is imposed. Changes in status, such as suspended, excluded, or disability inactive status, would also be published.

Section 11.59(b) provides that the OED Director's records of every disciplinary proceeding where a practitioner is reprimanded, suspended, or excluded, including when said sanction is imposed by default judgment, shall be made available to the public upon written request, unless the USPTO Director orders that the proceeding or a portion of the record be kept confidential. This section further provides that information may be withheld as necessary to protect the privacy of third parties or as directed in a protective order issued pursuant to § 11.44(c). This section also provides that the record of a proceeding that results in a practitioner's transfer to disability inactive status shall not be available to the public.

Section 11.59(c) provides that an order excluding a practitioner on consent under § 11.27 and the affidavit required under paragraph (a) of § 11.27 shall be available to the public unless the USPTO Director orders that the proceeding or a portion of the record be kept confidential. The section also provides that information in the order and affidavit may be withheld as necessary to protect the privacy of third parties or as directed in a protective order under § 11.44(c)(2). This section also provides that the affidavit required under § 11.27(a) shall not be used in any other proceeding except by order of the USPTO Director or upon written consent of the practitioner.

Section 11.60:

Section 11.60 is added to address petitions for reinstatement by excluded, suspended or resigned practitioners. Section 11.60 continues the practices of former § 10.160, except as noted in the following discussion. In addition to referencing suspended and excluded practitioners throughout the section, as did former § 10.160, § 11.60 also specifically references and applies the provisions to a resigned practitioner. Section 11.60(a) prohibits the practitioners from resuming the practice of patent, trademark, or other non-patent law before the Office until reinstated by order of the OED Director or the USPTO Director.

Section 11.60(b) provides that excluded or suspended practitioners are eligible to apply for reinstatement only upon expiration of the period of suspension or exclusion and the practitioner's full compliance with § 11.58. An excluded practitioner can be eligible to apply for reinstatement no earlier than at least five years from the effective date of the exclusion. The section also provides that a resigned practitioner can be eligible to petition for reinstatement and must show compliance with § 11.58 no earlier than at least five years from the date the practitioner's resignation is accepted and an order is entered excluding the practitioner on consent.

Section 11.60(c) provides for filing a petition for reinstatement with the OED Director accompanied by the fee required by § 1.21(a)(10). A practitioner who has violated any provision of § 11.58 is not eligible for reinstatement until a continuous period of the time in compliance with § 11.58 that is equal to the period of suspension or exclusion has elapsed. A resigned practitioner is not eligible for reinstatement until compliance with § 11.58 is shown. If a practitioner who is not eligible for reinstatement files a petition, or if the petition is insufficient or defective on its face, the OED Director may dismiss the petition. Otherwise the OED Director considers the petition for reinstatement. The practitioner seeking reinstatement has the burden of proof by clear and convincing evidence. The evidence must be included in or accompany the petition. The evidence must establish: that the practitioner has the good moral character and reputation, competency, and learning in law required under § 11.7 for admission; that resumption of practice before the Office will not be detrimental to the administration of justice or subversive to the public interest; and that the practitioner has complied with the provisions of § 11.58 for the full period of the suspension, or at least five years if the practitioner resigned or was excluded.

Section 11.60(d)(1) provides for the OED Director to grant a petition for reinstatement where the practitioner has complied with §§ 11.60(c)(1) through (c)(3) by entering an order for reinstatement conditioned on payment of the costs of the disciplinary proceeding to the extent set forth in § 11.60(d)(2). Section 11.60(d)(3) provides for granting relief, in whole or part, from an order assessing costs on grounds of hardship, special circumstances, or other good cause. Good cause may include, for example, the disciplinary proceeding costs in excess of $1,500 incurred by the practitioner were not anticipated because the disciplinary proceeding began before the effective date of these rules and concluded thereafter. Under the old rules, the maximum cost that could be recovered was $1,500.

Section 11.60(e) provides that where the OED Director finds the practitioner is unfit to resume the practice of patent law before the Office, the practitioner is first provided with an opportunity to show cause in writing why the petition should not be denied. If unpersuaded by the practitioner's showing, the OED Director must deny the petition. The OED Director may require the practitioner, in meeting the requirements of § 11.7, to take and pass an examination under § 11.7(b), ethics courses, and/or the Multistate Professional Responsibility Examination. The OED Director must provide findings, together with the record. The findings must include specified information regarding “Prior Proceedings.”

Section 11.60(f) provides for resubmission of petitions for reinstatement if a petition for reinstatement is denied. A petition for reinstatement may not be resubmitted until the expiration of at least one year following the denial unless the order of denial provides otherwise.

Section 11.61:

Section 11.61 is added to provide savings clauses and continues the current practice under former § 10.161, except as discussed below. Section 11.61(c) provides that sections 11.24, 11.25, 11.28 and 11.34 through 11.57 apply to all proceedings in which the complaint is filed on or after the effective date of these regulations. Section 11.61(c) also provides that §§ 11.26 and 11.27 apply to matters pending on or after the effective date of these regulations. Section 11.61(d) provides that sections 11.58 through 11.60 apply to all cases in which an order of suspension or exclusion is entered or resignation is accepted on or after the effective date of these regulations.

Sections 11.62—11.99.

Sections 11.62-11.99 are reserved.

Section 41.5:

Section 41.5(e) would be revised to change a cross-reference to § 11.22.

Response to comments: The Office published a notice proposing changes to the Office's rules governing disciplinary proceedings for attorneys, registered patent agents and persons granted limited recognition to practice before the Office. See

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

; Notice of proposed rule making, 68 FR 69442 (Dec. 12, 2003), 1278

Off. Gaz. Pat. Office

22 (Jan. 6, 2004) (proposed rule). The Office received one hundred forty-seven comments (from intellectual property organizations and patent practitioners) in response to this notice. The Office thereafter published a supplemental notice of proposed rule making for the rules governing disciplinary proceedings. See

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

, Supplemental Notice of Proposed Rule Making, 72 FR 9196 (Feb. 28, 2007), 1316

Off. Gaz. Pat. Office

123 (Mar. 27, 2007) (supplemental proposed rule). The Office received fourteen comments (from intellectual property organizations and patent practitioners) in response to this notice. The Office's responses to the comments follow:

Comment 1:

Two comments suggested that the word “add” in the instructions for the amendment to § 11.1 be changed to “revise” inasmuch as a definition of “State” was contained in the section in the rules adopted June 24, 2004.

Response: The suggestion in the comment has been adopted.

Comment 2:

A comment inquired as to the meaning of “other proceedings” in § 11.2(c), and suggested that the rule either permit the Director to stay other proceedings or to stay the proceedings based on good and sufficient reasons presented by a prospective registrant in a petition.

Response: The suggestion has not been adopted. This section, like § 1.181(f), makes clear that the filing of a petition does not operate to stay any other proceeding. Thus, a petition by an applicant for registration who has paid the $1600 application fee and is seeking review of the decision requiring the payment, would not stay another proceeding in the Office regarding the same applicant, such as the processing of the individual's application to take the registration examination. No rule is believed necessary to enable the OED Director, where appropriate, to coordinate other proceedings within the OED Director's jurisdiction.

Comment 3:

Two comments suggested that clarification is required regarding whether a fee is needed for a petition under § 11.2(e).

Response: No clarification is believed necessary. Section 11.2(e) does not provide for or otherwise refer to a fee to invoke the supervisory authority of the USPTO Director in appropriate circumstances in a disciplinary matter. Therefore, no fee for the petition is required in disciplinary matters.

Comment 4:

One comment, after noting that § 11.3 as revised to eliminate a prohibition against petitioning to waive a disciplinary rule and the explanation for the revision, suggested the elimination of provisions in § 11.3 for suspensions of the rules.

Response: The disciplinary rules containing the ethical standards of practice for practitioners will be only one of several subjects addressed in Part 11. Part 11 currently includes,

inter alia,

rules addressing registration to practice, rules addressing investigations and rules for disciplinary procedures. Section 11.3 in Part 11, like § 1.183 in Part 1, provides both a procedure for requesting suspension of a rule, and a standard upon which the decision is made.

Comment 5:

A comment noted that § 11.3 no longer provides immunity for complainants, witnesses, and disciplinary counsel, that the lack of immunity is contrary to longstanding policy found in Rule 12 of the Model Rules of Lawyer Disciplinary Enforcement for the reasons explained in the Commentary to Rule 12, and recommended that this section provide absolute immunity for complainants, witnesses and OED personnel.

Response: While we appreciate the provisions of Rule 12 of the Model Rules of Lawyer Disciplinary Enforcement and the expressed reasons for providing immunity, it is beyond the authority of the USPTO Director to provide immunity by rule. For example, as discussed below regarding § 11.18, all persons filing written communications with the Office, including complainants, are subject to the provisions of 18 U.S.C. 1001. The Office cannot provide complainants with immunity from violation of a criminal law.

Comment 6:

One comment observed that the first sentence of § 11.5 could be construed to imply that preparation and prosecution privileges do not encompass practice before the Board of Patent Appeals and Interferences inasmuch as an ex parte proceeding before the Board arguably is not prosecution of a patent application. The comment suggested revising the language to read “including representing applicants in patent matters before the Board of Patent Appeals and Interferences.”

Response: The suggestion to revise § 11.5(a) is adopted in part. In the first sentence, the word “applications” has been changed to “matters,” and the sentence now provides for keeping a register of the names of attorneys and agents who are “recognized as entitled to represent applicants having prospective or immediate business before the Office in the preparation and prosecution of patent matters.” The change is inclusive of representing applicants before the Board of Patent Appeals and Interferences in a patent matter.

Comment 7:

Two comments suggested that “or retaining” be added after “employing” in the last sentence of § 11.5(b). One comment pointed out that the addition conforms to Rule 5.3(a) of the American Bar Association's Rules of Professional Conduct. The other comment pointed out that a practitioner may retain, as opposed to employ, a non-practitioner assistant, under the supervision of the practitioner to prepare presentations to the Office.

Response: The suggestion to add “or retaining” after “employing” in the last sentence of § 11.5(b) has been adopted.

Comment 8:

Two comments presented similar suggestions for replacement of the phrase “in preparation of said presentations” in the last sentence of § 11.5(b). One comment suggested replacing the phrase with “in matters pending or contemplated to be presented before the Office”; the other suggested using “matters pending or

contemplated to be presented to the Office.” Both comments suggested the change would more accurately define the activities and be consistent with other language in this section. A third comment suggested the non-practitioner should be broadened to include a person or entity which is not technically the practitioner's employee or on the practitioner's payroll, and who may be an independent contractor who communicates or consults with a client in working with a practitioner.

Response: The two similar suggestions for replacement of the phrase “in preparation of said presentations” have been adopted by replacing phrase with “matters pending or contemplated to be presented to the Office” in the last sentence of § 11.5(b).

The suggestion to broaden the non-practitioner to include a person or entity which is not technically the practitioner's employee or on the practitioner's payroll to communicate or consult with clients working for the practitioner has not been adopted. The persons and entities would not be subject to a practitioner's supervision, and absent supervision or other controls, could be engaged in the unauthorized practice of law by providing unsupervised and incorrect legal advice. The Office's Disciplinary Rules prohibit a practitioner from aiding another in the unauthorized practice of law. See 37 CFR 10.47. Persons or entities engaging in the unauthorized practice of law will be reported to the authorities in the appropriate jurisdiction(s). See § 11.19(d). The persons and entities contemplated by the suggestion are beyond the ambit of the Office's Disciplinary Rules. Under the suggestion, the practitioners have no supervisory authority over the persons or entities, and therefore could violate the Disciplinary Rules for non-supervision or aiding unauthorized practice of law. Thus, the Office could not protect the public from the actions of the persons or entities, though Congress has made the USPTO Director responsible for protecting the public from the misdeeds of those who practice before the Office.

Comment 9:

One comment urged that § 11.5 places unnecessary and improper restrictions on practitioners who may work with non-practitioner invention developers who communicate or consult with clients who may want to file documents with the Office. The comment said it is unreasonable and improper for the Office to interfere with the relationship between invention promoters and practitioners by restricting practitioners from working with non-practitioners, including invention promoters who may consult or communicate with clients regarding their inventions, so long as legal advice and the filing of patent applications, attending hearings, etc. remain the responsibility of the practitioner. The comment suggested changes to § 11.5 to eliminate the following “overly broad” language: law-related services “that comprehend[] any matter connected with the presentation to the Office,” the preparation of necessary documents “in contemplation of filing the documents” with the Office, and “communicating with * * * a client concerning matters pending or contemplated to be presented before the Office” in § 11.5(b); “consulting with * * * a client in contemplation of filing a patent application or other document with the office” in § 11.5(b)(1). The comment urged that a person who may have prospective business before the Office may want to utilize both lay and legal service providers in connection with his invention, including non-practitioners who merely assemble information to provide non-legal services at a much lower cost than practitioners would charge.

Response: The Office disagrees that § 11.5 places unnecessary and improper restrictions on practitioners who may work with non-practitioners who communicate or consult with clients. Nothing in the rule prevents a person having prospective business before the Office from utilizing both lay and legal service providers in connection with that person's invention. Non-practitioners who assemble information to provide only non-legal services at a cost may continue to provide non-legal services. However, non-practitioners who, for example, provide law-related services “that comprehend[] any matter connected with the presentation to the Office” or prepare necessary documents, such as patent applications, “in contemplation of filing the documents” with the Office must be employed or retained by the practitioner and under the practitioner's supervision. The suggestion to change the language of § 11.5 to enable non-practitioners to consult or communicate with clients regarding their inventions, and enable clients to obtain services at lower cost than practitioners can provide has not been adopted. Contrary to the comment, assembly of information is not always a non-legal service; for example, providing a list of patent references found in a search of the prior art is a non-legal service whereas transmitting information to the practitioner to use to describe the invention in a patent application is a legal service. The value of competent legal service and advice, including communications, consultations, and assembly of information for inventors can be significantly more valuable than its cost. Its value may be more significant for unsophisticated inventors who need expert evaluation of the merits or real prospects of legal protection for their invention. The Office “frequently finds itself challenged by so-called `invention promoters' who exploit unsophisticated inventors, heap every invention with praise regardless of the merits or the real prospects of legal protection, and entice inventors into engagement agreements filled with hollow guarantees of patent protection and promises of royalty-bearing licenses that seldom yield anything of any significant value.”

Bender

v.

Dudas,

490 F.3d 1361, 1363 (Fed Cir. 2007). A practitioner working with an unsupervised non-practitioner facilitates such practices. For example, in

Bender,

the Court found “[a]t no point did Gilden [a practitioner] consult with the inventors regarding the filing of a design patent application or the embellished drawings.”

Id.

at 1364. At a minimum, it is necessary that the practitioner representing the client not only consult with the client, but also that the consultation “otherwise advise[] that inventor on how best to proceed in his or her particular case.”

Id.

at 1365. Non-practitioners are not entitled to provide legal advice or otherwise practice law. To the extent practice of law includes a law-related service that comprehends any matter connected with the presentation to the Office, the preparation of necessary documents in contemplation of filing the documents with the Office, and communicating with * * * a client concerning matters pending or contemplated to be presented before the Office as in § 11.5(b), a practitioner authorized by relevant law must provide the legal services. For example, consultation with a client in contemplation of filing a patent application or other document with the Office as in § 11.5(b)(1) requires a registered practitioner to provide the services. A practitioner may not circumvent the Disciplinary Rules through the actions of another. See 37 CFR 10.23(b)(2). For example, a non-practitioner who is neither employed nor retained by the practitioner, or who is not under the supervision of the practitioner, may not assist the practitioner in matters pending or contemplated to be presented to the Office.

Comment 10:

Several comments responded to the Office's inquiry

whether the rules “should explicitly provide for circumstances in which a patent agent's causing an assignment to be executed might be appropriate incidental to preparing and filing an application.” Two comments pointed out that § 11.5(b)(1) would be internally inconsistent if patent agents could provide advice about “alternative forms of protection that may be available under state law” but not prepare and file assignments in connection with the applications they have prepared. One comment suggested that the Office lacks the authority to, and should not, prohibit a patent agent or registered patent attorney licensed only by the Office from preparing an assignment for an application he or she is prosecuting, while another comment recommended that the rule explicitly provide for preparing assignments and licenses for patent applicants and patentees. One comment said that it has been the Office's position that a registered patent agent could both prepare a patent assignment or license if not prohibited by state law and submit the assignment or license for recordation, and recommended that this position be explicitly stated in the rules. The comment also urged that the rule follow the practice of states that permit paraprofessionals, such as patent agents to complete and modify assignment and license documents under an attorney's supervision. The comment pointed out that allowing these types of activities is particularly important in a corporate environment where only one or two form agreements may be used in certain clearly defined situations. One comment suggested it is unnecessary for the Office to explicitly provide for appropriate circumstances when a patent agent may prepare an assignment and/or cause an assignment to be executed not only because these activities are incidental to the preparation and prosecution of patent applications or incidental to the record for an issued patent, but also because of the Office's long-standing position a registered patent agent may prepare a patent assignment and cause such assignment to be executed if not prohibited by state law. One comment objected to a requirement that if a document is submitted for recordation by an attorney or agent, that the attorney or agent submitting the document must be separately licensed by the state bar in which the assignor and/or assignee lives, in addition to being licensed by the Office. Two comments inquired how the transfer of rights in the U.S. invention from a foreign inventor to a foreign company should be handled. One comment suggested the attorney or agent who is handling the substantive prosecution needs to be able to act fast to resolve ownership questions, for example to file a terminal disclaimer, or, for example, to ensure the correctness of the assignment recordation affirmations that the prosecuting attorney or agent makes when submitting the assignee's name on the issue fee transmittal sheet. Several comments cited impracticalities and difficulties if a patent agent is unable to prepare assignments, for example, where the application to be assigned has multiple inventors living in different states, hiring an attorney for each state simply to cause an assignment to be executed in such State would be an unnecessary administrative burden. One comment suggested that agents be allowed to select, not draft or vary, one or more form assignments by having the Office adopt standard form assignments, and that the Office establish well-defined, common, specific “safe harbor” situations in which agents can recommend such standard forms to their clients.

Response: The filing of an assignment, while not legally required for prosecution, is no doubt “reasonably necessary and incident to” prosecution of a patent application. This is true to enable an assignee of record of the entire interest to control prosecution of the application to the exclusion of the assignor. See 37 CFR 1.33(b)(4) and 3.71.

The diverse comments regarding the authority of practitioners to preparing assignments and licenses for patent applicants and patentees demonstrate the necessity for the Office to provide for appropriate circumstances when registered practitioners, including patent agents, may do so. Inasmuch as numerous situations involving assignments arise, the Office is not attempting by rule to explicitly identify all circumstances when a registered practitioner may prepare or cause an assignment to be signed. Instead, the provisions of § 11.5(b)(1) are written to broadly outline the circumstances when a practitioner may prepare an assignment for patent applicants and patentees by virtue of the practitioner's registration.

There is no statute or rule requiring training in contract law as a condition to be registered as a patent agent. No comment suggested any means whereby patent agents could receive adequate training and the competence to provide legal advice could be confirmed. Absent adequate training, a person drafting an assignment could overlook issues for which lawyers have received training. For example, in addition to preparing an assignment form, it may be necessary to advise whether the inventor is obligated to assign the invention, and if so, to whom. It may be necessary to resolve ownership questions, for example, to file a terminal disclaimer where there is no previously existing employment agreement or where an employment agreement contains no obligation to assign patent rights. In some situations, assignments lead to serious complexities, which can impact title and prevent patent enforcement. Patent agents are not empowered by their registration to provide advice about title and enforcement of patents. Accordingly, it is appropriate to set forth authority of practitioners to prepare an assignment or cause an assignment to be executed by virtue of their registration.

Preparing an assignment or causing an assignment to be executed is appropriate only when they are reasonably necessary and incidental to the preparation and prosecution of a patent application, or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate. The patent application may be, for example, a provisional, nonprovisional or reissue application. Other proceedings include, for example, an interference or reexamination proceeding. A practitioner, by virtue of being registered, may prepare an assignment or cause it to be signed in the foregoing circumstances if in drafting the assignment the practitioner does no more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party. Registration does not authorize a registered practitioner to recommend or determine the terms to be included in an assignment. The practitioner is not authorized to select or recommend a particular form assignment from among standard form assignments. Registration does not authorize a practitioner to draft an assignment or other document in circumstances that do not contemplate a proceeding before the Office involving a patent application or patent. For example, where an assignment is prepared in contemplation of selling a patent or in contemplation of litigation, there is no proceeding before the Office. When, after a patent issues, there is no proceeding before the Office in which the patent agent may represent the patent owner, drafting an assignment or causing the assignment to be signed are not activities reasonably necessary and incidental to representing a patent owner before the Office.

Section 11.5(b)(1) provides circumstances in which a registered practitioner may prepare an assignment or cause an assignment to be executed. The assignment must be reasonably necessary and incidental to filing and prosecuting a patent application for the patent owner or the practitioner represents the patent owner after the patent issues in a proceeding before the Office. In drafting the assignment the practitioner must not do more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party. Thus, where a previously existing written employment agreement between an inventor and the employing corporation contains one or more clauses obligating an inventor to assign to the company inventions made in the course of employment, a practitioner may draft an assignment wherein the provisions replicate those of the employment agreement.

Contrary to several comments, the Office has not taken the position that a registered patent agent could prepare a patent assignment or license for a patent if not prohibited by state law. The Office's long-standing position has been that “[p]atent agents * * * cannot * * * perform various services which the local jurisdiction considers as practicing law. For example, a patent agent could not draw up a contract relating to a patent, such as an assignment or a license, if the state in which he/she resides considers drafting contracts as practicing law.” See

General Information Concerning Patents, http://www.uspto.gov/web/offices/pac/doc/general/index.html.

Drawing up an assignment for an issued patent is not necessarily always reasonably necessary and incidental to filing or prosecuting a patent application or other proceeding before the Office involving a patent. For example, where a first party is selling and a second party is purchasing a patent, the transfer of patent rights between the parties is not a proceeding before the Office. Drafting an assignment for either party would be beyond the scope of recognition practice before the Office.

A license is neither reasonably necessary nor incidental to filing or prosecuting a patent application or a proceeding before the Office involving a patent. Under Office rules only an assignee of the entire interest, not a licensee, may revoke previous powers in a patent application and be represented by a registered practitioner of the assignee's own selection. See 37 CFR 1.36. Similarly, the rules do not authorize a licensee to control the representation of a party in a reexamination or interference proceeding. Accordingly, the Office has not authorized patent agents to draft license agreements in contemplation of filing or prosecuting patent applications or conduct proceedings before the Office regarding issued patents.

The suggestion to follow the practice of most states permitting paraprofessionals, such as patent agents, to complete and modify assignment and license documents under an attorney's supervision need not be adopted. Although 35 U.S.C. 152, 202, 204 and 261 refer to assignment or licensure of patents or patent rights, assignments and licenses are forms of contracts, which are creatures of state, not Federal law. Contracts are enforceable under state law. The authority to prepare contracts and provide advice regarding the terms to include in contracts is subject to the state law regarding who is authorized to practice law. It is unnecessary for the Office to authorize practitioners to comply with state laws permitting paraprofessionals to act under the supervision of an attorney where the State's authority to control the acts are not preempted by Federal law. It is not apparent from any comment that corporations or other organizations using few agreements in certain clearly defined situations have been or would be adversely impacted by the lack of an Office rule permitting patent agents to complete and modify documents assignment and license documents under an attorney's supervision.

No state was identified as prohibiting paraprofessionals from modifying assignments and license documents under a lawyer's supervision. Modifying assignment and license documents could necessitate expert knowledge of state principles for which registered practitioner status does not prepare agents. Whereas a corporation or other organization may employ paraprofessionals, including patent agents, to act under a lawyer's supervision, the attorney would remain responsible for the completed or modified document. There remains, however, registered patent agents who are self-employed and do not act under a lawyer's supervision. Adopting a rule requiring registered patent agents to act under the supervision of lawyers to modify assignment and license documents does not address in a satisfactory manner when patent agents may prepare the documents in reliance on their registration to practice before Office. Thus, the circumstances contemplated in the suggestion do not obtain for all patent agents practicing before the Office. Inasmuch as assignments and licenses are the creation of state, not Federal, statute, authority to prepare these agreements and provide advice regarding the terms to include in them is subject to the state law regarding who is authorized to practice law.

In a corporate or other organizational environment, where only one or two form agreements may be used in certain clearly defined situations, the provisions of § 11.5(b)(1) allowing a practitioner to replicate the terms of the form agreements support efficiencies sought by all interested parties. Section 11.5(b)(1) is not limited to practitioners employed by a corporation or practitioners acting under the supervision of a lawyer. The practitioners may be self-employed or in firms. Section 11.5(b)(1) permits any registered practitioner to replicate the terms of the form agreements for an assignment in contemplation of filing or prosecuting a patent application, and submit the same to the Office for recordation in connection with a concurrently filed or pending patent application. For example, where an inventor and investor, each possibly represented by their own counsel, have reached terms for assignment of an invention in contemplation of filing a patent application, a patent agent may draft the assignment if the agent does no more than replicate the terms of the previously existing oral or written assignment agreement between the inventor and investor. It is not necessary for the registered practitioner to be under the supervision of a lawyer to provide the service inasmuch as the agent is functioning as a scrivener.

It is not and has not been the intent of the Office to require the agent or attorney physically submitting a document for recordation to be separately licensed by the state bar in which the assignor and/or assignee lives. Additionally, there is no requirement that the attorney submitting a document for recordation in the Office be registered to practice before the Office. The recordation of documents is a ministerial act by the Office. The Office does not require the person or party submitting the document be registered to practice before the Office. For example, an assignment or license document may be submitted to the Office for recordation by a patent or trademark owner, a registered patent agent or a registered patent attorney who is separately licensed in a state other than the state wherein the attorney practices. However, whoever submits an assignment or license is responsible for ensuring the correctness of the

submitted documents. See 37 CFR 11.18. Likewise, the registered practitioner submitting the assignee's name on the issue fee transmittal sheet is responsible for ensuring the correctness of the contents of the sheet, including any representation that a party identified as an assignee is in the assignee. See § 11.18.

Comments regarding the transfer of rights in the United States of inventions from a foreign inventor to a foreign company implicitly address an invention that occurs abroad. Any transfer of rights would likely arise under foreign law, which would determine the appropriate person to draft any original assignment or license reflecting the transfer of rights. A patent agent may draft assignment that transfers rights in the United States that merely replicates the provisions of the previously existing oral or written obligation of assignment in a foreign country between the persons or parties. In the absence of a previously existing obligation of assignment in a foreign country, an attorney, presumably after consultation with the client, could draft the assignment for the client.

Suggestions that administrative burdens caused by not permitting patent agents to prepare assignments would justify permitting agents to draft assignments are unpersuasive. A typical situation cited is the administrative burden incurred when there is an application having multiple inventors living in different states if it is necessary to hire an attorney for each state simply to cause an assignment to be executed in such state instead of having an agent draft the assignment. The comments commonly assumed that all agents are competent to provide the legal services and the invention is to be assigned. First, there is no requirement that patent agents be trained in contract law to be registered to practice before the Office in patent cases. Absent adequate training, the client may not receive the legal advice and service the client has every right to expect. The possible temporary “convenience” of having a practitioner inadequately trained in the legal service the practitioner provides does not outweigh the need for competence. A practitioner is prohibited from handling a legal matter which the practitioner knows or should know that the practitioner is not competent to handle, without associating with another practitioner who is competent to handle it. See 37 CFR 10.77(b). Therefore, clients represented by a practitioner would be disserved by that practitioner if the practitioner is not competent to provide advice whether multiple inventors living in different states are subject to the contract laws of all the states or one state, whether the inventors are obligated to assign the invention, whether the inventors should assign as opposed to license the invention absent a legal obligation to assign, and other legal implications of any agreement. Burdens may arise for practitioners and clients when the clients are not competently advised about available legal options, such as licensure or assignment, as well as the benefits, terms and costs of each option. The convenience of having a registered practitioner provide a legal service for which no training is required for registration does not outweigh the benefits of obtaining competent legal advice and assistance.

The Office is not adopting the suggestion to allow agents to select, but not draft or vary, one or more form assignments by adopting standard form assignments, and that the Office establish well-defined, common situations, that would be specific “safe harbor” situations in which agents can recommend such standard forms to their clients. The very suggestion demonstrates the necessity for clients to receive competent legal advice before they sign any document transferring rights. There are numerous employment situations as well as other contractual and non-contractual situations requiring legal analysis and advice regarding whether and when an inventor is obligated to assign an invention, transfer shop rights in an invention, or license an invention. The situations are subject to state law, which varies from state to state. It would be inappropriate for the Office to adopt standard form assignments or adopt “safe harbors” inasmuch as no form or harbor could address or anticipate all possible terms and situations. Though the comment did not recommend that adoption of standard licensing forms and safe harbors for licensing, such action by the Office would be similarly imprudent. The fact that legal reference books provide numerous forms, rather than a single one, demonstrates that there is no standard for assignments or licenses, for which a “safe harbor” could be provided. Competent legal training is necessary to assess whether any rights in an invention should be transferred by assignment or license, as well as the terms for the transfer.

Comment 11:

Two comments urged that the weight of authority holds that a patent agent may not advise about the content of alternate forms of state intellectual property protection. One comment urged that the USPTO lacks jurisdiction over state law forms of intellectual property protection, under state law, patent agents are not licensed to provide such advice. One comment made the same observation for a registered lawyer who is not licensed in the state where he or she is practicing.

Response: The Office is not expanding its jurisdiction over state law forms of intellectual property protection. Thus, § 11.5(b)(1) does not provide for a patent agent advising about the content of alternate state forms of intellectual property protection. Section 11.5(b)(1), consistent with Supreme Court precedent, provides for “considering the advisability of relying upon alternative forms of protection which may be available under statute law.” In

Sperry

v.

State of Florida ex rel Florida Bar,

373 U.S. 379, 83 S.Ct. 1322 (1963), the Supreme Court said that the preparation and prosecution of patent applications for others constitutes the practice of law, which “inevitably requires the practitioner to consider and advise his clients as to the patentability of their inventions under the statutory criteria, 35 U.S.C. 101—103, 161, 171, as well as to consider the advisability of relying upon alternative forms of protection which may be available under state law.”

Id.

373 U.S. at 383, 83 S.Ct. at 1323. Patent agents should consider the advisability of relying on the alternative forms of protection available under statute law. Inasmuch as the state laws are public, agents should refer clients to the statutes and suggest that the client consult with an attorney of the client's choice in the state whether the statute has been adopted about the alternative forms of protection available under statute law. The same would obtain for a registered patent attorney who is not licensed in the state where the attorney is practicing unless the state where the attorney is practicing has authorized the attorney to provide legal services. For example, if the attorney is “corporate counsel” or “in-house counsel” and is licensed to practice law in another state, the attorney may provide legal advice about the state's statutes to the attorney's corporate employer if the state where the attorney is practicing has authorized the attorney to provide legal services for the attorney's employer in the state where the attorney is practicing.

Comment 12:

One comment expressed doubt that listing explicit circumstances in which a patent agent may or may not participate is either necessary or helpful. Another comment urged that the “includes, but is not limited to” language in § 11.5 is vague and indefinite since it does not put the public on notice as to what else would constitute patent practice before the Office, that the Office needs to define

exactly what constitutes the practice of patent law subject to USPTO jurisdiction, and that the rule be amended to define practice before the Office as prosecution of patent applications before the Office, preparing assignments and licenses for patent applicants and patentees and rendering opinions on validity and infringement for clients.

Response: The Office will not attempt by rule to define exactly what constitutes practice of patent law that is subject to the Office's jurisdiction. The scope of activities involved in practice of patent law before the Office is not necessarily finite, and is subject to change as the patent statute changes and rules are promulgated to the implement statutory changes. Instead, § 11.5(b)(1) is written to provide that registration to practice before the Office in patent cases sanctions the performance of those services which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceedings before the Office involving a patent application or patent in which the practitioner is authorized to participate. The services are identified as including considering the advisability of relying upon alternative forms of protection which may be available under statute law, and drafting an assignment or causing an assignment to be executed for the patent owner in contemplation of filing or prosecution of a patent application for the patent owner, or the practitioner represents the patent owner after a patent issues in a proceeding before the Office, and in drafting the assignment the practitioner does no more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party.

The suggestion to define practice before the Office as prosecution of patent applications before the Office has not been adopted. Inasmuch as practice before the Office in patent cases also includes, for example, representing a patent owner seeking reexamination of an application or before the Board of Appeals and Interferences, limiting practice before the Office to only prosecuting patent applications would be inappropriately narrow.

The suggestion to define practice before the Office as rendering opinions on validity and infringement for clients has not been adopted. Whether a validity opinion involves practice before the Office depends on the circumstances in which the opinion is sought and furnished. For example, an opinion of the validity of another party's patent when the client is contemplating litigation and not seeking reexamination of the other party's patent could not be reasonably necessary and incident to the preparation and prosecution of patent applications or other proceedings before the Office involving a patent application or patent. In such situations, the opinion may constitute unauthorized practice of law. See

Mahoning Cty. Bar Assn.

v.

Harpman,

608 N.E.2d 872 (Ohio Bd.Unauth.Prac. 1993). Similarly, a validity opinion for the sale or purchase of the patent is neither the preparation nor the prosecution of a patent application. Likewise, the opinion is not a proceeding before the Office involving a patent application or patent. Registration to practice before the Office in patent cases does not authorize a person to provide a validity opinion that is not reasonably necessary and incident to representing parties before the Office. In contrast, a validity opinion issued in contemplation of filing a request for reexamination would be in contemplation of a proceeding before the Office involving a patent. Due to registration to practice before the Office in patent cases, a practitioner may issue a validity opinion in contemplation of filing a request for reexamination.

In no circumstance would practice before the Office include the rendering of opinions on infringement. Under the law, the Office has no authority to resolve infringement cases. Thus, registration to practice before the Office in patent cases does not include authority to render infringement opinions. See

Mahoning Cty. Bar Assn.

v.

Harpman, supra.

Comment 13:

One comment suggested that the Office not adopt the last sentence of § 11.14(a), “[r]egistration as a patent attorney does not itself entitle an individual to practice before the Office in trademark matters,” inasmuch as any attorney meeting the qualification of being a member in good standing of a State or Federal Bar can practice before the Office in trademark cases. Another comment queried why registration as a patent attorney does not itself entitle an individual to practice before the Office in trademark matters.

Response: To clarify the intent of the last sentence of § 11.14(a), the term “attorney” has been changed to “practitioner.” The sentence now reads “[r]egistration as a patent practitioner does not itself entitle an individual to practice before the Office in trademark matters.” Whether a practitioner registered on or after January 1, 1956, has been registered as a patent attorney or patent agent, the practitioner's registration as an attorney or agent does not in itself entitle the practitioner to practice before the Office in trademark matters. To qualify to practice before the Office in trademark matters since January 1, 1956, a person must be an attorney meeting the statutory qualification of 5 U.S.C. 500 of being a member in good standing of the bar of the highest court of a State. However, the Office's recognition of a lawyer to practice before the Office in trademark matters does not authorize the attorney to engage in the practice of law where the attorney is not authorized to practice law. See § 11.14(d), and its predecessor rules, 10.14(d) and 2.14(d). Inasmuch as membership in a bar of a Federal court is not a qualifying criteria set forth in 5 U.S.C. 500 to practice before a Federal agency, it does not qualify a person to practice before the Office in trademark cases. A person lacking membership in good standing in the bar of the highest court of a state may not practice before the Office in trademark matters, even if the person is registered with the Office as a patent attorney. For example, a registered patent attorney who is suspended or disbarred on ethical grounds from practice of law or suspended on nonethical grounds, such as non-payment of annual dues, in State A, the only jurisdiction where the attorney was admitted to practice law, may not continue to practice before the Office in trademark matters following the effective date of the suspension or disbarment.

Further, a nonlawyer registered as a patent agent after January 1, 1956, is not qualified to practice before the Office in trademark matters. A person who was registered as a patent agent after January 1, 1956, and thereafter became an attorney who has remained in good standing with the bar of the highest court of a state may practice before the Office in trademark cases, even if the person never changed his or her registration status with the Office.

Furthermore, a person registered as a patent agent before January 1, 1956, who changed his or her registration status at any time to registered patent attorney cannot revert after 1956 to being a patent agent registered before January 1, 1956. If such a person does not maintain his or her membership in good standing with the bar of the highest court of a state, the person becomes an agent at that time and is not entitled to continue to represent others before the Office

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