DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 1 and 104
[Docket No. 010808202-1202-01]
RIN 0651-AB22
Legal Processes
AGENCY: Office of the General Counsel, United States Patent and
Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office
("USPTO" or "Office") is implementing rules relating to civil
actions and claims involving the Office. Specifically, the rules
provide procedures for service of process, for obtaining Office
documents and employee testimony, for indemnifying employees, and for
making a claim against the Office under the Federal Tort Claims Act.
DATES: Effective September 12, 2001.
FOR FURTHER INFORMATION CONTACT: Bernard J. Knight, Jr., Deputy General
Counsel for General Law, at 703-308-2000.
SUPPLEMENTARY INFORMATION: This rule was proposed in a
notice of proposed rulemaking published at 65 FR 80810 on December 22,
2000. Background information on this rule may be found in that notice.
Discussion of Comments
Comment: Proposed section 104.23 purports to prohibit "employees"
(which include ex-employees) from giving expert testimony regarding
"Office information, subjects, or activities." In patent infringement
actions, it is common for a party to put up an ex-USPTO employee
(often a very senior employee, such as a former Commissioner) as an
expert witness to explain the procedures of the USPTO to the judge or
jury. It is unclear that the Office has the authority to prohibit
ex-employees from so testifying, but in any event the use of ex-USPTO
employees as expert witnesses on such general subjects should not be
prohibited. If this is not the intent of proposed section 104.23 then
the rule should be clarified.
Response: Under the provisions of 37 CFR 104.21(b)(2),
former employees are excluded from the scope and purpose of Subpart C
with respect to matters in which the former employee did not
participate personally while at the Office. In addition, under 37 CFR
104.23(a)(2), the General Counsel may authorize an employee to give
expert testimony in exceptional circumstances and purpose.
Consequently, the rule does not prohibit former employees from giving
expert testimony in appropriate circumstances.
Comment: Generally, it is not clear that the Office should
preclude an investigation into whether inequitable conduct or fraud on
the Office had been practiced in a given patent application. Interested
parties (e.g., the defendant in an infringement action) should be
permitted to inquire into certain events if fraud is alleged. For
instance, if an exhibit had been shown at an interview and it were
alleged that the exhibit (which had since been destroyed) had
fraudulently represented the invention, there would be no way to obtain
that information absent interviewing the Examiner - the interview
summary sheet would not be effective here. Permitting such discovery
would impose only a slight burden on the Office and would not be
inconsistent with the policies discussed in the notice of the proposed
rule. Moreover, to the extent that permitting such inquiry would assist
in uncovering and deterring fraud and inequitable conduct, other
important policies would be furthered. It may be appropriate to treat
requests for such discovery under proposed section 104.3 (relating to
exceptional circumstances). If such is the case, then the Office is
requested to respond to this comment by indicating that lawsuits in
which fraud/inequitable conduct issues are raised are sufficiently
"exceptional" that requests for discovery into such allegations
will be favorably considered (or at least deemed appropriately raised)
under this rule.
Response: The rule does not prohibit a party from calling an
employee as a fact witness. The rules do prevent inquiry into an
examiner's state of mind. For example, subjective state of mind of the
employee is irrelevant to an inequitable-conduct inquiry. If fact
testimony proves to be inadequate, then the parties may avail
themselves of the provisions of section 104.3, which provides that the
General Counsel may waive or suspend the rules in extraordinary
circumstances.
Comment: The application of the Department of Commerce
("DOC") rules and the proposed USPTO rules to former employees is
unnecessary to protect the legitimate interests of the Office. The
existing USPTO rules of practice preclude former employees from taking
any action which gives an appearance of impropriety. 37 CFR 10.110 and
10.111. Those rules give adequate protection to the USPTO for voluntary
testimony by former employees concerning matters the former employees
worked on while employed by the USPTO. Friedman v. Lehman,
40 USPQ2d 1206 (D.D.C. 1996).
Response: Part 10 only applies to registered patent
practitioners and trademark attorneys practicing before the USPTO. If
the former employee is not practicing before the USPTO, Part 10 does
not apply. Thus, this proposed rule is intended to apply to all
employees, not just those employees who practice before the USPTO.
Indeed, some former employees do not practice before the Office.
Further, Part 10 is intended to protect the public from improper
conduct by practitioners, while these rules are intended in part to
protect the USPTO's deliberative or otherwise confidential information
from unauthorized disclosure.
Comment: If, however, the USPTO does adopt rules applying to
former employees, it should be made clear that such rules would not
have retroactive effect, so that activity that was considered proper
when performed would not now become improper and subject a former
employee to some type of disciplinary action. In this regard, it would
be desirable to clarify what relationship any violation of the proposed
rules would have to misconduct under the disciplinary rules of 37 CFR
Part 10.
Response: The rules are not given retroactive effect. Under
the provisions of 37 CFR 10.23, misconduct potentially could include
the actions of an employee who provided testimony that was not
authorized by the rules. This issue, however, is within the
jurisdiction of the Director, Office of Enrollment and Discipline, and
is not properly addressed in these rules. Note, however, that the DOC
rules have explicitly applied to former employees since 1995.
Comment: In addition, consideration should also be given to
the effect which the current DOC rules will have with respect to former
USPTO employees which proposed 104.21 (b) (2) would exempt. Such
former USPTO employees are also former DOC employees and the proposed
rules do not appear to address this question.
Response: While USPTO is a separate agency within the DOC,
only the USPTO rules are applicable to current and former USPTO
employees with respect to testimony related to official USPTO business.
Of course, a former USPTO employee who is also a current or former
employee of another DOC organization would be subject to the DOC rules
with respect to matters related to that organization. Moreover, the
exception provided by 104.21(b)(2) for former employees, is
consistent with DOC policy regarding similar testimony of former DOC
employees.
Comment: With respect to information sought by subpoena
addressed in 104.22, the USPTO should be required to appear if it
opposes a disclosure of information and should not be able to shift
that obligation to the former employee. Thus, the commenter opposes the
proposed rules insofar as they would enable the USPTO to sanction a
former employee for failure to comply with proposed 104.22(f) when
the Office has been properly notified but does not send legal counsel
to appear and contest the subpoena on behalf of the employee.
Response: The purpose of 104.22(f) is not to "shift
that obligation to the former employee." The USPTO intends to seek
Department of Justice representation for former employees when the
General Counsel makes a determination under the rules that an employee
should not comply with a subpoena. In those cases where compliance with
a subpoena is commanded before Department of Justice representation can
be arranged, the employee must, nevertheless, refuse to comply. In
order to minimize the occurrence of this event, 104.22(a) requires
employees to immediately notify the General Counsel when they are
served with a subpoena.
Comment: It is noted that unlike the DOC rules which define
employee as including "current or former employees" (15 CFR
15.12(f)) and then consistently use the term "employee", the
proposed rules use the same definition as the DOC rules but then make a
reference to "former employee" in 104.21(b)(2). While this
appears appropriate for 104.21(b)(2), other sections seem to apply
solely to a current employee but are not so limited. We believe that
such potential ambiguities will render application of the rules
unclear.
Response: The term "employee" is consistently used in
the rules to refer to both current and former employees. The use of the
term "former employee" in 104.21(b)(2), which is the only
section that does not apply to both current and former employees, does
not create ambiguity.
Comment: The USPTO should clarify that proposed section
104.21(b)(2), which prohibits former employees from testifying as to
matters in which they "participate[d] personally," does not
prohibit former high ranking USPTO officials or employees from
providing expert testimony in court on USPTO procedures during the
period when the official or employee was working at the USPTO.
Response: The term "participated personally" is derived
from 18 U.S.C. 207(a) and is used here in keeping with the
interpretation the Office of Government Ethics has given the phrase at
5 CFR 2637.201(d).
Other Revisions to the Proposed Rule
A new section 104.4 has been added to clarify that nothing in
the rules waives or limits any requirement under the Federal Rules of
Criminal or Civil Procedure. Subsection 104.24(f) has been modified to
clarify the Office's duty to seek Department of Justice representation
for the employee involved when the General Counsel makes a decision not
to comply with a subpoena. In addition, other minor changes have been
made to the wording of the proposed rule.
Other Considerations
This rule is not significant under Executive Order 12866.
This final rule involves information collection requirements which are
subject to review by the Office of Management and Budget (OMB) under
the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.). The collection of information involved in this final rule
has been reviewed and previously approved by OMB under control number
0651-0046. The USPTO is not resubmitting an information collection
package to OMB for its review and approval because the changes in this
final rule do not affect the information collection requirements
associated with the information collection under OMB control number
0651-0046.
In accordance with the Regulatory Flexibility Act (5 U.S.C. 605(b)),
USPTO has certified that this rule will not have a significant impact
on a substantial number of small businesses. The factual basis for this
certification was provided in the Notice of Proposed Rulemaking
published on December 22, 2000, 65 FR 80810. The factual basis for the
certification remains the same for this final rule, and therefore, need
not be repeated.
This rulemaking does not contain policies with federalism implications
sufficient to warrant preparation of a Federalism Assessment under
Executive Order 13132 (August 4, 1999).
List of Subjects in 37 CFR Parts 1 and 104
Administrative practice and procedure, Claims, Courts, Freedom
of information, Inventions and patents, Tort claims, Trademarks.
For the reasons stated in the preamble, the United States
Patent and Trademark Office amends 37 CFR chapter I as follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read
as follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
2. Section 1.17 is amended by revising paragraph (h) to read as
follows:
1.17 Patent application processing fees.
* * * * *
(h) For filing a petition to the Commissioner under one of the
following sections which refers to this paragraph . . . $130.00
1.12 - for access to an assignment record
1.14 - for access to an application
1.47 - for filing by other than all the inventors or a person not the
inventor
1.53(e) - to accord a filing date
1.59 - for expungement and return of information
1.84 - for accepting color drawings or photographs
1.91 - for entry of a model or exhibit
1.102 - to make an application special
1.103(a) - to suspend action in an application
1.138(c) - to expressly abandon an application to avoid publication
1.182 - for decision on a question not specifically provided for
1.183 - to suspend the rules
1.295 - for review of refusal to publish a statutory invention
registration
1.313 - to withdraw an application from issue
1.314 - to defer issuance of a patent
1.377 - for review of decision refusing to accept and record payment
of a maintenance fee filed prior to expiration of a patent
1.378(e) - for reconsideration of decision on petition refusing to
accept delayed payment of maintenance fee in an expired patent
1.644(e) - for petition in an interference
1.644(f) - for request for reconsideration of a decision on petition
in an interference
1.666(b) - for access to an interference settlement agreement
1.666(c) - for late filing of an interference settlement agreement
1.741(b) - to accord a filing date to an application under \s 1.740
for extension of a patent term
5.12 - for expedited handling of a foreign filing license
5.15 - for changing the scope of a license
5.25 - for a retroactive license
104.3 - for waiver of a rule in Part 104 of this title
* * * * *
3. Redesignate subchapter B to read as follows:
SUBCHAPTER B - ADMINISTRATION
4. Add Part 104 to read as follows:
PART 104 - LEGAL PROCESSES
Subpart A - General Provisions
Sec.
104.1 Definitions.
104.2 Address for mail and service; telephone number.
104.3 Waiver of rules.
104.4 Relationship of this Part to the Federal Rules of Civil and Criminal
Procedure.
Subpart B - Service of Process
104.11 Scope and purpose.
104.12 Acceptance of Service of Process.
Subpart C - Employee Testimony and Production of Documents in
Legal Proceedings
104.21 Scope and purpose.
104.22 Demand for testimony or production of documents.
104.23 Expert or opinion testimony.
104.24 Demands or requests in legal proceedings for records protected
by confidentiality statutes.
Subpart D - Employee Indemnification
104.31 Scope.
104.32 Procedure for requesting indemnification.
Subpart E - Tort Claims
104.41 Procedure for filing claims.
104.42 Finality of settlement or denial of claims.
Authority: 35 U.S.C. 2(b)(2), 10, 23, 25; 44 U.S.C.
3101, except as otherwise indicated.
Subpart A - General Provisions
104.1 Definitions.
Demand means a request, order, or subpoena for
testimony or documents for use in a legal proceeding.
Director means the Director of the United States Patent and
Trademark Office.
Document means any record, paper, and other property held by
the Office, including without limitation, official letters, telegrams,
memoranda, reports, studies, calendar and diary entries, maps, graphs,
pamphlets, notes, charts, tabulations, analyses, statistical or
informational accumulations, any kind of summaries of meetings and
conversations, film impressions, magnetic tapes, and sound or
mechanical reproductions.
Employee means any current or former officer or employee of
the Office.
Legal proceeding means any pretrial, trial, and posttrial
stages of existing or reasonably anticipated judicial or administrative
actions, hearings, investigations, or similar proceedings before
courts, commissions, boards or other tribunals, foreign or domestic.
This phrase includes all phases of discovery as well as responses to
formal or informal requests by attorneys or others involved in legal
proceedings.
Office means the United States Patent and Trademark Office,
including any operating unit in the United States Patent and Trademark
Office, and its predecessors, the Patent Office and the Patent and
Trademark Office.
Official business means the authorized business of the
Office.
General Counsel means the General Counsel of the Office.
Testimony means a statement in any form, including personal
appearances before a court or other legal tribunal, interviews,
depositions, telephonic, televised, or videotaped statements or any
responses given during discovery or similar proceedings, which response
would involve more than the production of documents, including a
declaration under 35 U.S.C. 25 or 28 U.S.C. 1746.
United States means the Federal Government, its departments
and agencies, individuals acting on behalf of the Federal Government,
and parties to the extent they are represented by the United States.
104.2 Address for mail and service; telephone number.
(a) Mail under this part should be addressed to General
Counsel, United States Patent and Trademark Office, P.O. Box 15667,
Arlington, VA 22215.
(b) Service by hand should be made during business hours to the Office
of the General Counsel, Crystal Park Two, Suite 905, 2121 Crystal
Drive, Arlington, Virginia.
(c) The Office of the General Counsel may be reached by telephone at
703-308-2000 during business hours.
104.3 Waiver of rules.
In extraordinary situations, when the interest of justice
requires, the General Counsel may waive or suspend the rules of
this part, sua sponte or on petition of an interested party to the
Director, subject to such requirements as the General Counsel may
impose. Any petition must be accompanied by the petition fee set forth
in 1.17(h) of this title.
104.4 Relationship of this Part to the Federal Rules of Civil or
Criminal Procedure.
Nothing in this part waives or limits any requirement under the
Federal Rules of Civil or Criminal Procedure.
Subpart B - Service of Process
104.11 Scope and purpose.
(a) This subpart sets forth the procedures to be followed when
a summons and complaint is served on the Office or on the Director or
an employee in his or her official capacity.
(b) This subpart is intended, and should be construed, to ensure the
efficient administration of the Office and not to impede any legal
proceeding.
(c) This subpart does not apply to subpoenas, the procedures for which
are set out in subpart C.
(d) This subpart does not apply to service of process made on an
employee personally on matters not related to official business of the
Office or to the official responsibilities of the employee.
104.12 Acceptance of service of process.
(a) Any summons and complaint to be served in person or by
registered or certified mail or as otherwise authorized by law on the
Office, on the Director, or on an employee in his or her official
capacity, shall be served as indicated in 104.2.
(b) Any employee of the Office served with a summons and complaint
shall immediately notify, and shall deliver the summons and complaint
to, the Office of the General Counsel.
(c) Any employee receiving a summons and complaint shall note on the
summons and complaint the date, hour, and place of service and whether
service was by hand or by mail.
(d) When a legal proceeding is brought to hold an employee personally
liable in connection with an action taken in the conduct of official
business, rather than liable in an official capacity, the employee by
law is to be served personally with process. See Fed. R. Civ. P.
4(e). An employee sued personally for an action taken in the
conduct of official business shall immediately notify and deliver a
copy of the summons and complaint to the General Counsel.
(e) An employee sued personally in connection with official business
may be represented by the Department of Justice at its discretion (28
CFR 50.15 and 50.16).
(f) The Office will only accept service of process for an employee in
the employee's official capacity.
Subpart C - Employee Testimony and Production of Documents in Legal
Proceedings
104.21 Scope and purpose.
(a) This subpart sets forth the policies and procedures of the
Office regarding the testimony of employees as witnesses in legal
proceedings and the production or disclosure of information contained
in Office documents for use in legal proceedings pursuant to a demand.
(b) Exceptions. This subpart does not apply to any legal
proceeding in which:
(1) An employee is to testify regarding facts or events that are
unrelated to official business; or
(2) A former employee is to testify as an expert in connection with a
particular matter in which the former employee did not participate
personally while at the Office.
104.22 Demand for testimony or production of documents.
(a) Whenever a demand for testimony or for the production of
documents is made upon an employee, the employee shall immediately
notify the Office of the General Counsel at the telephone number or
addresses in 104.2 and make arrangements to send the subpoena to the
General Counsel promptly.
(b) An employee may not give testimony, produce documents, or answer
inquiries from a person not employed by the Office regarding testimony
or documents subject to a demand or a potential demand under the
provisions of this subpart without the approval of the General Counsel.
The General Counsel may authorize the provision of certified copies not
otherwise available under Part 1 of this title subject to payment of
applicable fees under 1.19.
(c)(1) Demand for testimony or documents. A demand for the
testimony of an employee under this subpart shall be addressed to the
General Counsel as indicated in 104.2.
(2) Subpoenas. A subpoena for employee testimony or for a
document shall be served in accordance with the Federal Rules of Civil
or Criminal Procedure or applicable state procedure, and a copy of the
subpoena shall be sent to the General Counsel as indicated in 104.2.
(3) Affidavits. Except when the United States is a party,
every demand shall be accompanied by an affidavit or declaration under
28 U.S.C. 1746 or 35 U.S.C. 25(b) setting forth the title of the legal
proceeding, the forum, the requesting party's interest in the legal
proceeding, the reason for the demand, a showing that the desired
testimony or document is not reasonably available from any other
source, and, if testimony is requested, the intended use of the
testimony, a general summary of the desired testimony, and a showing
that no document could be provided and used in lieu of testimony.
(d) Failure of the attorney to cooperate in good faith to enable the
General Counsel to make an informed determination under this subpart
may serve as a basis for a determination not to comply with the demand.
(e) A determination under this subpart to comply or not to comply with
a demand is not a waiver or an assertion of any other ground for
noncompliance, including privilege, lack of relevance, or technical
deficiency.
(f) Noncompliance. If the General Counsel makes a
determination not to comply, he or she will seek Department of Justice
representation for the employee and will attempt to have the subpoena
modified or quashed. If Department of Justice representation cannot be
arranged, the employee should appear at the time and place set forth in
the subpoena. In such a case, the employee should produce a copy of
these rules and state that the General Counsel has advised the employee
not to provide the requested testimony nor to produce the requested
document. If a legal tribunal rules that the demand in the subpoena
must be complied with, the employee shall respectfully decline to
comply with the demand, citing United States ex rel. Touhy v.
Ragen, 340 U.S. 462 (1951).
104.23 Expert or opinion testimony.
(a)(1) If the General Counsel authorizes an employee to give
testimony in a legal proceeding not involving the United States, the
testimony, if otherwise proper, shall be limited to facts within the
personal knowledge of the employee. Employees, with or without
compensation, shall not provide expert testimony in any legal
proceedings regarding Office information, subjects, or activities
except on behalf of the United States or a party represented by the
United States Department of Justice.
(2) The General Counsel may authorize an employee to appear and give
the expert or opinion testimony upon the requester showing, pursuant to
104.3 of this part, that exceptional circumstances warrant such
testimony and that the anticipated testimony will not be adverse to the
interest of the Office or the United States.
(b)(1) If, while testifying in any legal proceeding, an employee is
asked for expert or opinion testimony regarding Office information,
subjects, or activities, which testimony has not been approved in
advance in writing in accordance with the regulations in this subpart,
the witness shall:
(i) Respectfully decline to answer on the grounds that such expert or
opinion testimony is forbidden by this subpart;
(ii) Request an opportunity to consult with the General Counsel before
giving such testimony; and
(iii) Explain that upon such consultation, approval for such testimony
may be provided.
(2) If the tribunal conducting the proceeding then orders the employee
to provide expert or opinion testimony regarding Office information,
subjects, or activities without the opportunity to consult with the
General Counsel, the employee shall respectfully refuse to provide such
testimony, citing United States ex rel. Touhy v. Ragen, 340
U.S. 462 (1951).
(c) If an employee is unaware of the regulations in this subpart and
provides expert or opinion testimony regarding Office information,
subjects, or activities in a legal proceeding without the
aforementioned consultation, the employee shall, as soon after
testifying as possible, inform the General Counsel that such testimony
was given and provide a written summary of the expert or opinion
testimony provided.
(d) Proceeding where the United States is a party. In a
proceeding in which the United States is a party or is representing a
party, an employee may not testify as an expert or opinion witness for
any party other than the United States.
104.24 Demands or requests in legal proceedings for records protected
by confidentiality statutes.
Demands in legal proceedings for the production of records, or
for the testimony of employees regarding information protected by the
confidentiality provisions of the Patent Act (35 U.S.C. 122), the
Privacy Act (5 U.S.C. 552a), the Trade Secrets Act (18 U.S.C. 1905), or
any other confidentiality statute, must satisfy the requirements for
disclosure set forth in those statutes and associated rules before the
records may be provided or testimony given.
Subpart D - Employee Indemnification
104.31 Scope.
The procedure in this subpart shall be followed if a civil
action or proceeding is brought, in any court, against an employee
(including the employee's estate) for personal injury, loss of
property, or death, resulting from the employee's activities while
acting within the scope of the employee's office or employment. When
the employee is incapacitated or deceased, actions required of an
employee should be performed by the employee's executor, administrator,
or comparable legal representative.
104.32 Procedure for requesting indemnification.
(a) After being served with process or pleadings in such an
action or proceeding, the employee shall within five (5) calendar days
of receipt, deliver to the General Counsel all such process and
pleadings or an attested true copy thereof, together with a fully
detailed report of the circumstances of the incident giving rise to the
court action or proceeding.
(b)(1) An employee may request indemnification to satisfy a verdict,
judgment, or award entered against that employee only if the employee
has timely satisfied the requirements of paragraph (a) of this section.
(2) No request for indemnification will be considered unless the
employee has submitted a written request through the employee's
supervisory chain to the General Counsel with:
(i) Appropriate documentation, including copies of the verdict,
judgment, appeal bond, award, or settlement proposal;
(ii) The employee's explanation of how the employee was acting within
the scope of the employee's employment; and
(iii) The employee's statement of whether the employee has insurance or
any other source of indemnification.
Subpart E - Tort Claims
Authority: 28 U.S.C. 2672; 35 U.S.C. 2(b)(2); 44 U.S.C. 3101;
28 CFR Part 14.
104.41 Procedure for filing claims.
Administrative claims against the Office filed pursuant to the
administrative claims provision of the Federal Tort Claims Act (28
U.S.C. 2672) and the corresponding Department of Justice regulations
(28 CFR Part 14) shall be filed with the General Counsel as indicated
in 104.2.
104.42 Finality of settlement or denial of claims.
Only a decision of the Director or the General Counsel
regarding settlement or denial of any claim under this subpart may be
considered final for the purpose of judicial review.
September 6, 2001 NICHOLAS P. GODICI
Acting Under Secretary of
Commerce for Intellectual Property and
Acting Director of the United States
Patent and Trademark Office