Restrictions on Current and Former Office Employees Regarding Patent Matters

35 U.S.C. 4

Restrictions on officers and employees as to

interest in patents.

Officers and employees of the Patent and Trademark Office

shall be incapable, during the period of their appointments and for one year thereafter,

of applying for a patent and of acquiring, directly or indirectly, except by inheritance

or bequest, any patent or any right or interest in any patent, issued or to be issued by

the Office. In patents applied for thereafter they shall not be entitled to any priority

date earlier than one year after the termination of their appointment.

37 CFR 11.10  Restrictions on practice in patent matters;

former and current Office employees; government employees.

(a) Only practitioners registered under §

11.6

;

individuals given limited recognition under §

11.9

(a)

or

(b)

or §

11.16

; or individuals admitted

pro hac vice as provided in §

41.5(a)

or

42.10(c)

of this chapter are permitted to represent others

before the Office in patent matters.

(b)

Post employment agreement of former Office employee.

No individual who has served in the patent examining corps or elsewhere

in the Office may practice before the Office after termination of his or her

service, unless he or she signs a written undertaking agreeing:

(1) To not knowingly act as agent or attorney for or otherwise

represent any other person:

(i) Before the Office,

(ii) In connection with any particular patent or patent

application,

(iii) In which said employee participated personally and

substantially as an employee of the Office; and

(2) To not knowingly act within two years after terminating

employment by the Office as agent or attorney for, or otherwise represent

any other person:

torney for or otherwise

represent any other person:

(i) Before the Office,

(ii) In connection with any particular patent or patent

application,

(iii) In which said employee participated personally and

substantially as an employee of the Office; and

(2) To not knowingly act within two years after terminating

employment by the Office as agent or attorney for, or otherwise represent

any other person:

(i) Before the Office,

(ii) In connection with any particular patent or patent

application,

(iii) If such patent or patent application was pending

under the employee’s official responsibility as an officer or employee

within a period of one year prior to the termination of such

responsibility.

Pursuant to

35 U.S.C. 4

, patent examiners, other

Office employees, and Office officers may not apply for a patent or acquire any right or

interest in any patent during the period of their employment with the Office and for one

year thereafter. An Office employee or officer who is named as an inventor in a patent

application will be presumed (1) to be legally incapable of signing the inventor's oath or

declaration pursuant to

35 U.S.C. 4

, or (2) to refuse to sign the inventor's oath or

declaration based on Office employee status. For applications filed on or after September

16, 2012, a substitute statement under

37 CFR 1.64

may be filed in lieu of the

oath or declaration without contacting the current employee or officer of the Office.

The amendments to

37 CFR 11.10

were made, in part, to

ensure that the restrictions of the post-employment agreement in this provision are

coextensive with the post-employment restrictions in 18 U.S.C. 207. Notwithstanding the

elimination of 37 CFR 11.10(d), Office employees remain barred from prosecuting, or aiding

in the prosecution of, any patent or trademark application before the Office by virtue of

conflict-of-interest statutes, such as 18 U.S.C. 203 and 205, as well as regulations, such

as those promulgated by the Office of Government Ethics in 5 CFR chapter XVI

restrictions in 18 U.S.C. 207. Notwithstanding the

elimination of 37 CFR 11.10(d), Office employees remain barred from prosecuting, or aiding

in the prosecution of, any patent or trademark application before the Office by virtue of

conflict-of-interest statutes, such as 18 U.S.C. 203 and 205, as well as regulations, such

as those promulgated by the Office of Government Ethics in 5 CFR chapter XVI. Similarly,

the provision in former 37 CFR 11.10(e) that practice before the USPTO by Government

employees is subject to applicable conflict-of-interest laws, regulations, or codes of

professional responsibility is already set forth in

37 CFR

11.111

. See also

MPEP § 309

.

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