United States Patent and Trademark Office OG Notices: 16 November 2004
PATENT AND TRADEMARK OFFICE
37 CFR Parts 1, 10 and 11
Docket No.: 2002-C-005
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 or
USPTO) is updating the procedures regarding recognition to practice
before the Office in patent cases. The update is done to take advantage
of computerized delivery of examinations, and to enable registration
applicants to benefit in several ways, including scheduling the
examination a their convenience and having more opportunities to take
the examination.
DATES: Effective Date: July 26, 2004.
FOR FURTHER INFORMATION CONTACT: Harry I. Moatz ((703) 305-9145),
Director of Enrollment and Discipline (OED Director), directly by
phone, or by facsimile to (703) 305-4136, 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: The Office published proposed rules
regarding "Changes to Representation of Others Before The United
States Patent and Trademark Office" on December 12, 2003 (68 FR 69442)
and provided a sixty-day comment period that ended on February 10,
2004. The proposed rules included Subpart A, General Provisions,
Subpart B, Recognition To Practice Before The Office, Subpart C,
Investigations and Disciplinary Proceedings, and Subpart D, United
States Patent and Trademark Office Rules of Professional Conduct. The
Office published in the Federal Register an initial extension on
January 29, 2004 (69 FR 4269) of the period for public comment
regarding the ethics rules in Subpart D of the proposed rules.
Additional time for public comment was allowed for consideration of
whether the Rules for Professional Conduct should include the revisions
to the Model Rules as amended by the American Bar Association at the
end of its February 2002 Midyear Meeting, also known as the Ethics 2000
revision. The Office thereafter published in the Federal Register
notice on March 3, 2004 (69 FR 9986) of an extension for public comment
on proposed rules 1.4(d)(2), 1.8(a)(2)(iii)(A), 1.21(a)(6) through
(a)(9), 1.21(a)(11), 1.21(a)(12), 2.11, 2.17, 2.24, 2.33, 2.61,
11.2(b)(4) through 11.2(b)(7), 11.3(b) and (c), 11.5(b), 11.8(d),
11.9(c) (last two sentences), 11.9(d), 11.10(c) (second sentence),
11.10(d) (second sentence), 11.10(e) (second sentence), 11.11(b)
through (f), 11.12 through 11.62, and 11.100 through 11.900 as well as
the definitions in proposed rule 11.1 of terms that are used only in
rules in Subparts B, C and D, USPTO Rules of Professional Conduct.
Time was not extended to comment upon the provisions in proposed
rules 1.1, 1.21(a)(1) through (a)(5), 1.21(a)(10), 1.31, 1.33(c),
1.455(a), 11.2(a) through 11.2(b)(3), 11.2(c) through 11.2(e), 11.3(a)
and (d), 11.4 through 11.5(a), 11.6 through 11.8(c), 11.9(a) through
11.9(c) (first sentence), 11.10(a) through 11.10(c) (first sentence),
11.10(d) (first sentence), 11.10(e) (first and third sentences), and
11.11(a), as well as the definitions in proposed rule 11.1 of terms
used in the rules.
The rules adopted at this time apply only prospectively.
At this time, nearly 29,000 individuals are registered as patent
attorneys and agents, of whom about 80% have indicated that they are
attorneys. Most have been registered by taking and passing a paper
registration examination that was usually offered twice a year. The
existing rules, adopted in 1985, largely continued the practices and
procedures adopted and followed since the 1930's. They were well suited
to support delivery of a paper registration examination twice a year to
several hundred applicants.
The number of persons seeking registration has grown from a few
hundred to several thousand annually. Giving the examination twice a
year requires biannual filing of thousands of applications. More than
6,000 persons filed applications seeking registration in 2003. The
frequency of giving the examination has increased from once each nine
months in the 1970's to twice annually in the last several years.
Under the new computerized examination procedure, there are no
fixed application deadlines. Applications may be submitted throughout
the year. The applications will be reviewed, and persons admitted to
the examination will schedule the examination at their convenience with
a commercial entity engaged to deliver the examination. The commercial
entity is equipped to provide the exam at over 400 locations around the
United States. A person approved to take the examination will schedule
with the contractor the date and location where he or she desires to
take the examination. The person will have a ninety-day window,
beginning five business days after the mailing date of the letter
admitting the person to the examination, within which he or she must
take the examination.
Providing the examination in this manner will benefit persons
seeking registration by enabling them to apply at any time, schedule
the examination at a location and date convenient to them, and receive
their results more quickly. Those failing the examination will be able
to re-take the examination within approximately thirty days rather than
waiting six months, as has previously been the case.
Applicants for registration will benefit in several ways from a
computerized examination. It is now possible to deliver the
registration examination on a daily basis by computer. They will be
able to take the examination more frequently, get their results sooner,
and be registered sooner. There will be no registration application
filing deadline. With more than 400 locations around the country where
the examination will be offered each business day, the examination
sites will be conveniently closer to applicants. Applicants will also
be able to reschedule the examination.
The computerized examination will be offered beginning with the
effective date of this rule package. The examination can be
administered each business day throughout the year. The format of the
examination will remain unchanged. The examination will have 100
multiple choice questions - 50 in the morning session and 50 in the
afternoon session. During an initial period while the Office observes
the implementation of the computerized examination, applicants will
receive exam results approximately six weeks after electronic testing.
Thereafter, immediate exam results will be provided on-site.
Computer-based licensure testing will not be unique to the Office.
A wide variety of professional organizations utilize computer-based
testing for their licensure. For example, both the General Securities
Representative Examination (Series 7), and the Uniform Certified Public
Accountant (CPA) Examination are administered on computers.
Applicants will benefit from the program by the elimination of
application filing deadlines and the new ability to schedule the exam
at their convenience. In the past, the cyclical nature of giving the
examination twice a year was inefficient to both the Office
and persons seeking registration. Invariably, applications were filed
late and were necessarily disapproved. Many incomplete applications
could not be completed by the deadline. In short, offering the exam
twice a year meant that application deficiencies could not be cured
until the next time the test was offered - approximately six months
later.
Applicants benefit by being able to schedule when they want to take
the examination. Applicants can schedule the examination date within a
ninety-day period. They can also reschedule the examination on another
date within the ninety-day period for any reason.
The old method of paper testing required a significant devotion of
Office of Enrollment and Discipline (OED) resources during peak periods
to process and evaluate applications, as well as process the results. A
majority of applicants used to file their application just prior to or
on the deadline. Obviously, applicants will be better served if their
examination results are received more quickly. Those who pass the
examination and have no good moral character and reputation issues will
be registered sooner. The Office is better served by having a less
cyclical exam process. The computerized examination will produce a more
even flow of new applications for processing. The computerized
examination can be administered daily, and its results released more
quickly.
The new rules do not change the scientific and technical training
requirements for registration.
The new rules change procedures for the examination. These changes
will improve the Office's processes for handling applications for
registration, petitions, and moral character investigations.
Discussion of Specific Rules
Section 1.1: Section 1.1(a)(5) is added to provide an address for
correspondence directed to OED in enrollment, registration and
investigation matters.
Section 1.21: Section 1.21(a) is added to designate the
registration examination fee in paragraph (1)(ii)(A) for test
administration by the commercial entity, and in paragraph (1)(ii)(B)
for test administration by the USPTO.
Section 1.21(a)(5)(i) is added for a new fee for review by the OED
Director of an initial decision by a staff member of OED.
Section 1.21(a)(5) has been redesignated (a)(5)(ii), and section
citation of Sec. 10.2(c) is amended to Sec. 11.2(d).
Sections 1.21(a)(6) through 1.21(a)(9) are reserved.
Section 1.21(a)(10) is added for a fee for any of the following: On
application by a person for recognition or registration after
disbarment or suspension on ethical grounds, or resignation pending
disciplinary proceedings in any other jurisdiction; on petition for
reinstatement by a person excluded or suspended on ethical grounds, or
excluded on consent from practice before the Office; on application by
a person for recognition or registration who is asserting
rehabilitation from prior conduct that resulted in an adverse decision
in the Office regarding the person's moral character; and on
application by a person for recognition or registration after being
convicted of a felony or crime involving moral turpitude or breach of
fiduciary duty. For persons suspended or disbarred, the fee applies to
a person after suspension or disbarment on ethical grounds, as opposed
to a person suspended on only non-ethical grounds, such as failure to
pay State bar dues or failure to complete continuing legal education
requirements. The amount of the fee, $1,600, recovers a portion of the
average cost of processing an application filed by a person described
in this section.
Section 1.31: This section is amended to revise the references to
Secs. 11.6 and 11.9, respectively.
Section 1.33: Section 1.33(c) is amended to revise the references
to Secs. 11.5 and 11.11, respectively.
Section 1.455: This section is amended to revise the reference to
Sec. 11.9.
Title 37 of the Code of Federal Regulations, Part 10, is amended as
follows:
Section 10.2: This section is removed and reserved.
Section 10.3: This section is removed and reserved.
Section 10.5: This section is removed and reserved.
Section 10.6: This section is removed and reserved.
Section 10.7: This section is removed and reserved.
Section 10.8: This section is removed and reserved.
Section 10.9: This section is removed and reserved.
Section 10.10: This section is removed and reserved.
Section 10.11: This section is revised by deleting paragraph (a)
and deleting the designation (b) of paragraph (b).
Title 37 of the Code of Federal Regulations, Part 11, is added as
follows:
Section 11.1: This section defines terms used in Part 11. The
defined terms include attorney, belief, conviction, crime, Data Sheet,
fiscal year, fraud, good moral character and reputation, knowingly,
matter, OED, OED Director, OED Director's representative, Office,
practitioner, proceeding before the Office, reasonable, registration,
roster, significant evidence of rehabilitation, state, substantial,
suspend or suspension, United States, and USPTO Director. These terms
are used in the rules that address the recognition of individuals to
practice before the Office. An "application for reissue" has been
added to the definition of "proceeding before the Office" to clarify
its inclusion within the definition. "Other jurisdiction" has been
added to the definition of "suspend" or "suspension" to clarify
that the terms include temporary debarring from practice before the
Office or another jurisdiction.
Section 11.2: Section 11.2(a) is added to provide for the
appointment of the OED Director.
Section 11.2(b) sets forth the duties of the OED Director. The
duties of the OED Director include managing the Office of Enrollment
and Discipline, receiving and acting upon applications, and conducting
investigations concerning the moral character and reputation of
individuals seeking registration. The duties also include conducting
investigations into possible violations by practitioners of
Disciplinary Rules, initiating disciplinary proceedings under Sec.
10.132(b) with the consent of the Committee on Discipline, and
performing such other duties in connection with investigations and
disciplinary proceedings as may be necessary. The investigation and
disciplinary duties recited in Sec. 10.2(b) have been moved to Sec.
11.2(b)(4) to consolidate in one section all of the OED Director's
duties. The provisions in proposed Sec. 11.2(b)(4) remain subject to
comment. The investigation and disciplinary duties in Sec. 11.2(b)(4)
will be subject to change following the comments on proposed Sec.
11.2(b)(4).
Sections 11.2(b)(5) through (b)(7) are reserved.
Section 11.2(c) is added to provide a requirement that any petition
from any action or requirement of the staff of OED reporting to the OED
Director shall be taken to the OED Director. A provision added to the
final rule requiring the petition to be filed within sixty days from
the mailing date of the action or notice from which relief is requested
clarifies the point in time, not otherwise provided for in the proposed
rule, from which the petition must be filed. A fee, required by 37 CFR
1.21(a)(5), would be charged for the petition. A petition not
filed within the sixty-day period will be dismissed as untimely.
Section 11.2(d) is added to provide for a petition from a final
decision of the OED Director to the USPTO Director. A provision added
to the final rule requiring the petition to be filed within sixty days
from the mailing date of the final decision of the OED Director
clarifies the point in time, not otherwise provided for in the proposed
rule, from which the petition must be filed. The petition must be
accompanied by the fee in Sec. 1.21(a)(5). The petition will be
dismissed if not filed within sixty days from the mailing date of the
final decision of the OED Director.
Section 11.3: Section 11.3 is added to provide for suspension of
any requirement of the regulations of Part 11 which is not a
requirement of the statutes in an extraordinary situation, when justice
requires.
Recognition To Practice Before the USPTO
Section 11.4: Section 11.4 is reserved. Upon further consideration,
the Office has concluded that it is unnecessary to provide for a
Committee on Enrollment and has eliminated it in the rules. The
Committee's principal function has been the vetting of registration
examination questions. Office personnel have been developing a data
bank of questions for the registration examination and examiner
certification test. These personnel are not limited to members of the
Committee. Further, the proposed rules, Sec. 11.7(j), contemplated
using the Committee to conduct hearings about an individual's good
moral character and reputation. The final rules provide an individual
an opportunity to create a record, to respond to the OED Director's
show cause order, and to obtain review of the OED Director's decision
by petition to the USPTO Director. An individual dissatisfied with the
decision of the OED Director may petition the USPTO Director under
Sec. 11.2(d) for review of the decision. Accordingly, the rules will
not provide for or utilize a Committee on Enrollment to conduct a
hearing for good moral character and reputation determinations.
Section 11.5: Section 11.5 is added to provide for maintaining a
single register of attorneys and agents registered to practice before
the Office.
Section 11.6: Section 11.6(a) is added to provide qualifications
for attorneys to register to practice before the Office in patent
matters.
Section 11.6(b) is added to provide qualifications for non-
attorneys to register as patent agents to practice before the Office in
patent matters.
Section 11.6(c) is added to provide for qualifications for limited
reciprocal registration of any foreign person who is registered in good
standing before the patent office of the country in which he or she
resides and practices.
Section 11.6(d) is added to provide that the Chief Administrative
Patent Judge or Vice Chief Administrative Patent Judge of the Board of
Patent Appeals and Interferences will determine whether and the
circumstances under which an attorney who is not registered may take
testimony for an interference under 35 U.S.C. 24, or under Sec. 1.672
of this subchapter.
Section 11.7: Sections 11.7(a)(1) and 11.7(a)(2) require that an
individual apply for registration, and establish possession of good
moral character and reputation, legal, scientific and technical
qualifications, and competence to advise and assist patent applicants.
Section 11.7(b)(1)(i) requires that an individual file a complete
application for registration on a form supplied by the OED Director,
pay the fees required by Sec. 1.21(a)(1), and present satisfactory
proof of sufficient basic training in scientific and technical matters.
Aliens are also required to present affirmative proof that recognition
to practice before the USPTO is not inconsistent with the terms of
their visa or entry into the United States. The proposed rule provided
for filing a complete application for each administration of the
examination. Inasmuch as the computer delivered examination will be
administered each business day, Sec. 11.7(b)(1)(i) has been revised to
provide that a complete application for registration must be filed each
time admission to the examination is requested.
Section 11.7(b)(1)(ii), which appeared as Sec. 11.7(b)(4) in the
proposed rules, requires that individuals seeking registration pass the
examination unless the examination is waived as provided for in Sec.
11.7(d) to enable the OED Director to determine whether the individual
possesses the required legal and competence qualifications. Section
11.7(b)(1)(ii) has been revised to provide that an individual failing
the examination must wait thirty days after the date the individual
last took the examination before retaking the examination. The revision
reduces the interval in the proposed rule between opportunities to take
and pass the examination. This section also sets forth the documents
and fees that must be filed by an individual reapplying after failing
the examination.
Section 11.7(b)(1)(iii), which appeared as Sec. 11.7(b)(6) in the
proposed rules, requires the individual to provide satisfactory proof
of possession of good moral character and reputation.
Section 11.7(b)(2) is added to provide that an individual failing
to file a complete application will be given notice and required to
complete the application within sixty days of the mailing date of the
notice. Inasmuch as the proposed rule did not specify when the sixty-
day period began, the final rule clarifies that the sixty-day period
begins with the mailing date of the notice. Individuals filing
incomplete applications will not be admitted to the examination.
Applications that are incomplete as originally submitted will be
considered only when they have been completed and received by OED
within the sixty-day period. Thereafter, a new and complete application
must be filed to establish an individual's qualifications and
demonstrated intent to take the examination. A proposed provision,
appearing in proposed Sec. 11.7(b)(4) as well as 37 CFR 10.7, and
prohibiting administration of the examination as an academic exercise,
has been revised inasmuch as it did not specify the qualifications for
admission to the examination. As revised, the provision has been moved
in the final rules to Sec. 11.7(b)(2). The revision permits only an
individual approved as satisfying the requirements of Secs. 11.7
(b)(1)(i)(A), 11.7(b)(1)(i)(B), 11.7(b)(1)(i)(C) and 11.7(b)(1)(i)(D)
to be admitted to the examination.
Section 11.7(b)(3), which appeared as Sec. 11.7(b)(5) in the
proposed rules, requires an individual first reapplying more than one
year after the mailing date of a notice of failure to again comply with
Sec. 11.7(b)(1) by filing a complete new application. The proposed
rule did not specify the date from which the one year would begin. The
final rule, by specifying the mailing date of the notice, eliminates
uncertainty in the proposed rule of the starting date of the one-year
period.
Section 11.7(c) provides that each individual seeking registration
is responsible for updating all information and answers submitted in or
with the application for registration. The application must be updated
within thirty days after the date of the occasion that necessitates the
update. In the notice of proposed rule making, Sec. 11.7(c) provided
for a petition to the OED Director. Proposed Sec. 11.2(c) also
provided for a petition to the OED Director. The redundancy is
unnecessary and the provision for the petition in Sec. 11.7(c) has
been removed in the final rules. There were also
redundant provisions in Secs. 11.7(b)(2) and 11.8(c) of the
proposed rules requiring individuals to update their applications. The
provisions have been removed from Secs. 11.7(b)(2) and 11.8(c),
and merged into Sec. 11.7(c) in the final rules.
Section 11.7(d) is added to provide for waiver of the examination
for former patent examiners and certain other employees. Section
11.7(d)(1) addresses registration of former patent examiners who by
July 26, 2004, had not actively served four years in the patent
examining corps, and were serving in the corps at the time of their
separation. The examination may be waived if the individual
demonstrates that he or she actively served in the patent examining
corps, received a certificate of legal competency and negotiation
authority, was thereafter rated at least fully successful in each
quality performance element of his or her performance plan for the last
two complete fiscal years as a patent examiner, and was not under an
oral or written warning regarding the quality performance elements at
the time of separation from the patent examining corps. For
consistency, the effective date of Sec. 11.7(d) has been reduced from
sixty days indicated in the proposed rules, to thirty days following
publication of the final rules.
Section 11.7(d)(2) is added to address registration of former
patent examiners who on July 26, 2004, had actively served four years
in the patent examining corps, and were serving in the corps at the
time of their separation. The examination may be waived when the
individual demonstrates that he or she actively served for at least
four years in the patent examining corps of the Office by July 26,
2004, was rated at least fully successful in each quality performance
element of his or her performance plan for the last two complete fiscal
years as a patent examiner in the Office, and was not under an oral or
written warning regarding the quality performance elements at the time
of separation from the patent examining corps.
Section 11.7(d)(3) is added to address registration of certain
former Office employees who were not serving in the patent examining
corps upon their separation from the Office. The OED Director may waive
the registration examination in the case of a former Office employee
meeting the requirements of Sec. 11.7(b)(1)(i)(c) who by petition
demonstrates possession of the necessary legal qualifications. The
former employee must show that as a result of having been in a position
of responsibility in the Office, he or she has an equivalent
comprehensive knowledge of patent law. In the position, the individual
must have provided substantial guidance on patent examination policy,
including the development of rule or procedure changes, patent
examination guidelines, changes to the Manual of Patent Examining
Procedure, development of training or testing materials for the patent
examining corps; development of materials for the registration
examination or continuing legal education; or represented the Office in
patent cases before Federal courts. The individual must establish that
he or she was rated at least fully successful in each quality
performance element of his or her performance plan for said position
for the last two complete rating periods in the Office, and was not
under an oral or written warning regarding performance elements
relating to such activities at the time of separation from the Office.
Section 11.7(d)(4) limits the eligibility period for seeking waiver
of the examination by an individual formerly employed by the Office
within the scope of Secs. 11.7(d)(1), 11.7(d)(2) and 11.7(d)(3).
An individual filing an application for registration more than two
years after separation from the Office is required to take and pass the
registration examination. Employees and former employees not satisfying
the requirements of Secs. 11.7(d)(1) through 11.7(d)(3) must
comply with Secs. 11.7(a) and 11.7(b) and take and pass the
registration examination to be registered. Therefore, it is redundant
to include a provision in Sec. 11.7(d)(4) requiring compliance with
Secs. 11.7(a) and 11.7(b). The provision in Sec. 11.7(d)(4) has
been removed from the final rule.
Section 11.7(e) is added to eliminate the regrading of examination
answers. The language in the proposed rule has been simplified in the
final rule. Within sixty days of the mailing date of a notice of
failure, the individual is entitled to inspect, but not copy, the
questions and answers he or she incorrectly answered. The inspection
will occur under supervision. Applicants will not be permitted to take
any notes relating to the questions or answers.
Section 11.7(f) is added to provide that applicants seeking
reciprocal recognition under Sec. 11.6(c) must file an application and
pay the application fee set forth in Sec. 1.21(a)(1)(i).
Section 11.7(g) is added to provide for soliciting information
bearing on the good moral character and reputation of individuals
seeking recognition, and for investigation of an individual's good
moral character and reputation.
Sections 11.7(g)(2) and 11.8(a) in the proposed rules address
publication of information to solicit information bearing on the good
moral character and reputation of applicants passing the examination or
seeking recognition. The redundancy has been removed by providing for
the procedure in Sec. 11.8(a). Sections 11.7(g)(3)(i) and
11.7(g)(3)(ii) have been renumbered 11.7(g)(2)(i) and 11.7(g)(2)(ii).
Section 11.7(g)(2)(i) requires that the OED Director conduct an
investigation into the good moral character and reputation of an
applicant if information is received "that reflects adversely" on the
applicant's good moral character and reputation. The proposed rule
authorized investigation upon receipt of information "tending to
reflect" adversely the good moral character. The final rule narrows
the circumstances when an investigation should occur.
Section 11.7(h) is added to provide guidance when lack of good
moral character and reputation exists. The provisions relating to
felonies and crimes have been clarified in the final rule to reference
conviction of a felony, conviction of a crime involving moral
turpitude, and a conviction of a crime involving breach of fiduciary
duty. Unlike the proposed rule that did not provide for conviction of
"a crime," the final rule clarifies that a conviction of the
respective crimes is evidence of lack of good moral character and
reputation.
Section 11.7(h)(1)(i) provides that an individual convicted of a
felony or any misdemeanor identified in Secs. 11.7(h) and
11.7(h)(1) is not eligible to apply for registration during the time of
any sentence, deferred adjudication, period of probation or parole as a
result of the conviction, and for a period of two years thereafter. The
proposed rule also provided for ineligibility for registration. The
latter provision has been removed from the final rule because
ineligibility to apply for registration precludes registration.
Pursuant to Sec. 11.3, an individual may request waiver of the two-
year period upon showing an extraordinary situation where justice
requires waiver, such as when a conviction is overturned.
Section 11.7(h)(4)(iii) specifies the defenses available to an
individual seeking registration who has been disbarred, suspended on
ethical grounds, or resigned in lieu of a disciplinary proceeding. The
proposed rule did not indicate the purpose of the defenses. The final
rule limits the defenses to an underlying disciplinary matter where the
individual contests the relevance of the disciplinary matter to his or
her good moral character and reputation. The defenses are the same as
those that are available to a practitioner in a reciprocal disciplinary
proceeding.
Section 11.7(i) identifies factors that may be taken into
consideration when evaluating rehabilitation of an applicant seeking a
good moral character determination for registration. Section
11.7(i)(8), which addresses misconduct attributable in part to a
medically recognized mental disease, disorder or illness, is revised to
remove a minimum period of time for which recovery must be shown, and
to provide that letters from the treating psychiatrist/psychologist
must verify that the medically recognized mental disease, disorder or
illness will not impede the individual's ability to competently
practice before the Office. The change reflects the Office's standard
for recognizing an individual's recovery efforts and a professional's
assessment. Proposed Sec. 11.7(i)(11) has been removed as providing a
presumption that education equates to ethical conduct. Section
11.7(i)(12) has been revised to remove references to particular
programs designed to provide social benefits or ameliorate social
problems. The revision enlarges the scope of acceptable programs
providing the same benefits. Proposed Secs. 11.7(i)(12) and
11.7(i)(13) have been renumbered as Secs. 11.7(i)(11) and
11.7(i)(12).
Section 11.7(j) is added to provide for the OED Director to inquire
into the good moral character and reputation of an individual seeking
registration, to provide the individual with an opportunity to respond
and create a record on which a decision is made. The OED Director will
consider the response and record, and issue a notice to show cause if
the OED Director is of the opinion that an individual has not
satisfactorily established that he or she possesses good moral
character and reputation. After a notice to show cause is issued, the
OED Director will consider the record and response filed by the
individual, and issue a decision on whether the individual has
sustained his or her burden. An individual may seek review of the OED
Director's decision pursuant to Sec. 11.2(d).
Section 11.7(k) is added to set forth conditions for reapplication
when an application for registration has been rejected because of lack
of good moral character and reputation. An applicant may reapply for
registration two years after the date of the decision denying the
individual registration. The application must include the fee required
by Sec. 1.21(a)(10). Pursuant to Sec. 11.3, an individual may request
waiver of the two-year period upon showing an extraordinary situation
where justice requires waiver, such as when a conviction is overturned.
Section 11.8: Section 11.8(a) provides for the OED Director to
promptly publish a solicitation for information concerning the
individual's moral character and reputation, including the individual's
name, and business or communication postal address.
Section 11.8(b) provides procedures for registration as a patent
attorney or agent, or being granted limited recognition. This section
also provides that within two years of issuance of notice of a passing
grade on the registration examination, the requirements for completion
of registration must be met. An individual seeking registration as a
patent attorney must demonstrate that he or she is a member in good
standing with the bar of the highest court of a state.
Section 11.8(c) provides that an individual who does not comply
with the requirements of Sec. 11.8(b) within the two-year period will
be required to retake the registration examination. This provision
appeared in Sec. 11.8(a) in the proposed rules.
Section 11.9: Section 11.9(a) provides for limited recognition of
individuals to practice before the Office in a particular patent
application or patent applications.
Section 11.9(b) provides for granting limited recognition to a
nonimmigrant alien who resides in the United States and fulfills the
provisions of Secs. 11.7(a) and (b) if the nonimmigrant is
authorized to be employed or trained in the United States in the
capacity of representing a patent applicant by preparing or prosecuting
the applicant's patent application. A provision in the proposed rules,
making nonimmigrant aliens authorized to receive training ineligible
for limited recognition, is withdrawn. Another proposal, limiting
recognition to being granted in increments of one year, has also been
withdrawn. Limited recognition will be granted for a period consistent
with the terms of authorized employment or training. These changes are
consistent with the law, will reduce burdens on applicants, and
facilitate administrative procedures.
Section 11.9(c) provides for limited recognition of an individual
not registered under Sec. 11.6 to prosecute an international patent
application only before the U.S. International Searching Authority and
the U.S. International Preliminary Examining Authority.
Section 11.10: Section 11.10 is added to address restrictions on
practice in patent matters for former employees of the Office. Section
11.10(a) is added to permit only practitioners who are registered under
Sec. 11.6 or individuals given limited recognition under Sec. 11.9(a)
or (b) to prosecute patent applications of others before the Office.
Individuals granted limited recognition under Sec. 11.9(c) may
prosecute an international patent application only before the United
States International Searching Authority and the United States
International Preliminary Examining Authority, but may not otherwise
practice before the Office, such as in an application filed under 35
U.S.C. 111 or 371. Accordingly, Sec. 11.10(a) addresses only
individuals granted limited recognition under Secs. 11.9(a) or
11.9(b), but not Sec. 11.9(c).
Section 11.10(b) is added to set forth post employment provisions
for any registered former Office employee. The provisions parallel
basic restrictions of 18 U.S.C. 207(a) and (b) on a registered former
Office employee acting as representative or communicating with intent
to influence a particular matter in which the employee personally
participated or for which the employee had official responsibility
within specified time periods. In addition, the provision proscribes
the similar conduct occurring behind the scenes by prohibiting conduct
that "aids in any manner" the representation or communication with
intent to influence.
Section 11.10(c) is added to clarify that the restrictions of Sec.
11.10(c) are in addition to those imposed on all Government employees
by other statutes and regulations.
Section 11.10(d) is added to continue to prohibit employees of the
Office from prosecuting or aiding in any manner in the prosecution of a
patent application.
Section 11.10(e) is added to make clear that practice before the
Office by Government employees is subject to any applicable conflict of
interest laws, regulations or codes of professional responsibility. A
statement in the proposed rule making, "noncompliance with said
conflict of interest laws, regulations or codes of professional
responsibility shall constitute misconduct under Secs. 11.804(b)
or 11.804(h)(8)," will be separately addressed when adoption of
proposed Secs. 11.804(b) or 11.804(h)(8) is considered.
Section 11.11: Section 11.11 is added to require a registered
practitioner to notify OED, separately from any notice given in any
patent application, of the business postal address, business e-mail
address, business telephone number, and of every change to any of those
addresses or telephone numbers, within thirty days of the date of the
change. Practitioners who are attorneys in good standing with the bar
of the highest court of one or more states must provide the OED Director
with the State bar identification number associated with each membership.
Further, this section identifies the information that the OED Director
will routinely publish on the roster about each registered practitioner
recognized to practice before the Office in patent cases.
Response to comments: The Office published a notice on December 12,
2003, proposing changes to rules by updating the procedures regarding
enrollment and discipline, and introducing new USPTO Rules of
Professional Conduct, largely based on the Model Rules of Professional
Conduct of the American Bar Association. See Changes to Representation
of Others Before the United States Patent and Trademark Office, 68 FR
69442 (December 12, 2003), 1278 Off. Gaz. Pat. Office 22 (January 6,
2004) (proposed rule). The Office received 112 written comments (27
from intellectual property or other organizations and 85 by patent
practitioners) in response to this notice. The comments regarding the
rules adopted at this time and the Office's responses to the comments
follow.
Comment 1: One comment suggested that privatized administration of
the registration examination will result in problems stemming from the
introduced profit motive, including increased costs associated with
sitting for the examination, and a decreased quality of practitioners
allowed to pass the examination. The comment opined that the profit
motive will result in a degradation of the examination process itself
and of the examination results if the private tester reduces manpower
and materials required to effectively administer the exam.
Response: To the extent the comment is suggesting that the Office
maintain the status quo for the examination procedure, the suggestion
has not been adopted. The commercial entity will be responsible only
for computer-based administration of the examination. Candidates will
continue to apply to OED, which will continue to review applications
and grant approval to sit for the examination only to persons
possessing the necessary scientific and technical training
qualifications. The Office retains complete control over (1) the
qualifications of the candidates, (2) determining each candidate's
moral character, (3) the content of the examination, and (4) the
qualifications to pass the examination. The USPTO will continue to set
the passing score. The USPTO will maintain control over the development
and content of the examination. The questions seek to ascertain that a
candidate knows the practices, policies, and procedures applicable to
patent prosecution as related in the Manual. Only Office personnel
generate, develop, vet and clear the questions for use on the
examination. The questions and answers are carefully checked against
the Manual to confirm that there is one correct answer. The Manual will
be available to candidates on a computer, and where they may confirm
the correctness of the answer they have selected. The Office is the
only entity that determines whether a question will be withdrawn for
any reason, or reused. Thus the Office will continue to maintain the
same high standards for registration.
In the past, the examination was administered twice a year in about
37 cities, whereas the commercial entity can administer the examination
each business day in over 400 sites. Accordingly, the examination will
be more widely available. The total fees for the computerized
examination are $350 (the sum of $200 examination development fee
charged by the Office, and the $150 fee charged by the commercial
entity administering the examination). This is an increase of only $40
over the $310 examination fee previously charged by the Office.
The computerized examination enables candidates to realize a
substantial savings for other costs associated with the examination.
For example, expenses that candidates may have incurred traveling to 37
cities to take the examination should be significantly reduced or
eliminated with more test facilities available on a daily basis.
Scheduling will also be more convenient for candidates. They can
schedule the examination anytime within a set ninety-day period at the
commercial entity's testing site closest to their home or office. They
can also arrange with the commercial entity to reschedule the
examination within the same ninety-day period.
The Office will also offer applicants the option of taking a paper
examination administered by the Office once a year. The fee for the
Office-administered paper examination will be $450. Inasmuch as one
paper examination was already administered in fiscal year 2004, the OED
Director will announce when the Office will offer a paper examination.
Comment 2: One comment suggested that the $130 petition fee for
review of any decision of the OED Director not be adopted because it is
an inequitable monetary penalty imposed upon a practitioner for the
privilege of seeking review of what may very well be an erroneous
action on the part of the OED Director.
Response: The suggestion has not been adopted. It is not a penalty
to charge a fee for a petition to review an official's decision. Since
1985 the Office has charged applicants for registration and
practitioners a petition fee for review of a variety of decisions by
the OED Director. See 37 CFR 1.21(a)(5) (imposing a fee for review
under Sec. 10.2(c)). The Office also charges for petitions to review
other decisions by agency officials. See 37 CFR 1.17(h) (imposing a fee
for filing a petition under Sec. 1.295 for review of refusals to
publish a statutory invention registration, Sec. 1.377 for review of
decisions refusing to accept and record payment of a maintenance fee
filed prior to expiration of a patent, and Sec. 1.378(e) for
reconsideration of a decision on petition refusing to accept delayed
payment of maintenance fee in an expired patent). The $130 fee is
consistent with the fee charged for the foregoing petitions in Sec.
1.17(h).
The fee is for review of the official's decision and the benefits
delivered by the opportunity for review and decision. The fee is not
punitive, nor is it a sanction against petitioners.
Comment 3: Two comments observed that the proposal to amend Sec.
1.1(a) by adding new paragraph (a)(4), the address for correspondence
intended for the United States Patent and Trademark Office, is based
upon an outdated version of Sec. 1.1(a).
Response: The suggestion has been adopted. The provisions of Sec.
1.1 have been revised to remove the reference to paragraph (a)(2), and
to change the numbering of proposed paragraph (a)(4) to (a)(5).
Comment 4: One comment suggested that Sec. 1.31 be amended to
recognize the situation in which joint applicants choose to file and
prosecute their own case before the USPTO.
Response: The suggestion is not adopted with this rule. The matter
is addressed in another rule titled "Clarification of Power of
Attorney Practice, and Revisions to Assignment Rules," RIN 0651-AB63.
This final rule has been submitted to the Federal Register for
publication at this time.
Comment 5: One comment suggested for clarity, each definition in
Sec. 11.1 should be separately numbered, e.g. by (1), (2) * * *, etc.,
to facilitate citation of each definition.
Response: The suggestion has not been adopted. The omission of
paragraph numbers facilitates the ease of addition or deletion of
definitions in Sec. 11.1 without having to renumber the definitions if
their position in the list of definitions changes. The definitions will
be maintained in alphabetical order to facilitate citation and location
of each definition.
Comment 6: One comment suggested that the definition of "good
moral character" appearing in the first sentence of Sec. 11.7(h) be
moved to Sec. 11.1 because the term is used in a number of other
proposed rules without reference to the definition in Sec. 11.7(h).
Therefore a person reading a rule other than Sec. 11.7(h) may not know
that the term had been defined in Sec. 11.7(h) and would naturally
seek the definition in Sec. 11.1.
Response: The suggestion has been adopted. The first sentence of
Sec. 11.7(h) defining "good moral character and reputation" has been
moved to Sec. 11.1.
Comment 7: One comment pointed out that, although proposed Sec 11.1
defined "application" as a patent or trademark application, the term
"application" is also used in proposed Secs. 11.2, 11.7, 11.8,
11.10 and 11.11 to refer to an application for registration. It was
suggested that the phrase "application for registration" be defined
in Sec. 11.1 and be the term that is used in Secs. 11.2(b)(2),
11.7(b)(1)(i), 11.7(f), 11.7(j)(1), 11.7(j)(3), 11.8(c), 11.10 and
11.11. The latter section uses the term "application," and the
definition of "application" includes only patent and trademark
applications. Introduction and use of the term "application for
registration" would avoid confusion with "application."
Response: The suggestion has been adopted in part. The term
"application for registration" need not be defined in Sec. 11.1, but
the term has replaced "application" in Secs. 11.2(b)(2),
11.7(b)(1)(i), 11.7(f), and 11.7(j). Inasmuch as there is no reference
to an "application for registration" in Sec. 11.8(c) as amended, and
Sec. 11.10, it was not necessary to modify "application" in this
manner. The suggestion as to proposed Secs. 11.7(j)(1) and
11.7(j)(3) is now moot inasmuch as they are not adopted. Section 11.11
addresses the necessity for registered practitioners to separately
provide written notice to the OED Director in addition to any notice of
change of address and telephone number filed in individual
applications. Therefore, where an introductory reference to an
"application" occurs in Secs. 11.10 and 11.11, the term
"application" has been modified with "patent."
Comment 8: One comment suggested that the definition of "belief"
or "believes" in Sec. 11.1 is indefinite because the meaning of
phrases "actually supposed" and "inferred from circumstances" are
not clear, and urged that the terms be defined as meaning that "an
individual assents to the truth of something offered for acceptance and
that the individual's belief may be inferred from factual
circumstances."
Response: The suggestion has not been adopted. The definition comes
from the Model Rules of Professional Conduct of the American Bar
Association. One of the purposes of generally conforming the USPTO
rules to the Model Rules is that those rules have been widely adopted
by states. As a result, decisional law through state auspices should
facilitate the development of a body of case law that will help provide
practitioners guidance on the meaning of terms that are necessarily
broad because they need to cover a variety of circumstances. At this
time, no change will be made while comments continue to be received
regarding the proposed professional conduct rules.
Comment 9: One comment opined that the definitions of "fraud" or
"fraudulent" and the terms "knowingly," "known," or "knows" in
Sec. 11.1 can be clarified. The definition of "fraud" or
"fraudulent," as "failure to apprise another of relevant
information" could encompass a deceit which under the definition would
not constitute fraud or a fraudulent act, and suggested that the terms
be tailored to practice before the Office in light of 37 CFR 1.56, and
that they be defined as "conduct having a purpose to deceive, and not
merely negligent misrepresentation or negligent failure to apprise
another of relevant information." It was suggested that the definition
of "knowingly," "known," or "knows" as "inferred from
circumstances" is not understood, and that the definition be replaced
with the phrase "inferred from circumstantial evidence."
Response: The suggestions have not been adopted. The definitions
come from the Model Rules of Professional Conduct of the American Bar
Association. At this time, no change will be made while comments
continue to be received regarding the proposed professional conduct
rules.
Comment 10: One comment suggested that the definitions of
"suspended or excluded practitioner," and "non-practitioner" be
separated out of the definition of "practitioner" to facilitate ease
of finding the definitions.
Response. The suggestion has been adopted in part. The definitions
of "suspended or excluded practitioner," and "nonpractitioner" have
been separated from "practitioner," and are not included in this
rule.
Comment 11: One comment suggested that Sec. 11.2(a) provide for
appointment of an acting Director where the OED Director must recuse
himself or herself from a case.
Response: The suggestion has been adopted. The second sentence has
been amended to read "In the event of the absence of the OED Director
or a vacancy in the Office of the OED Director, or in the event that
the OED Director recuses himself or herself from a case, the USPTO
Director may * * *." The appointment would contain any necessary
directions limiting the Acting OED Director's authority to act only in
the matter from which the OED Director is recused.
Comment 12: Two comments suggested that Sec. 11.2(c) be modified
to change the proposed one-month period in Sec. 11.2(c) to two months,
and one comment suggested that no fee be required to be consistent with
37 CFR 1.181. A third comment suggested that the proposed one-month
period be increased to ninety days.
Response: The suggestion has been adopted in part. The thirty-day
period for filing a petition has been enlarged to sixty days. Charging
a fee is consistent with the provisions of 37 CFR 1.181(d). As the
staff of OED with respect to individual cases generally exercises
independent judgment, charging a fee for review of that judgment by the
OED Director is in keeping with circumstances under which the USPTO
generally charges fees for consideration of petitions. The decisions
address the merits of a variety of situations, including, but not
limited to, incompleteness of applications for registration, scientific
and technical qualifications, and refunds. The Office charges fees for
review of decisions by other officials in a variety of situations. See,
for example, the fees charged in 37 CFR 1.17(h) for petitions under
Sec. 1.295 (for review of refusal to publish a statutory invention
registration), petitions under Sec. 1.377 (for review of decision
refusing to accept and record payment of a maintenance fee filed prior
to expiration of a patent), petitions under Sec. 1.378(e) (for
reconsideration of a decision on petition refusing to accept delayed
payment of maintenance fee in an expired patent), and petitions under
Secs. 1.644(e) and 1.166(f) (in an interference and for requesting
reconsideration of a decision on petition).
Comment 13: Two comments suggested that if a fee is charged under
Sec. 11.2 for filing a petition, it should be refunded if it is
determined that the OED Director acted improperly.
Response: The suggestion has not been adopted. A petition seeks a
determination that a decision should be reversed or modified. Such a
determination is obtained by the decision on petition. Under 35 U.S.C.
42(d), the Director is authorized to refund any fee paid in excess of
the amount required, or that is paid by mistake. Upon receiving a
decision, the petitioner who has paid the amount required is not
entitled to a refund of the petition fee inasmuch as the fee was not
paid by mistake or in excess. The fee, like other petition fees charged
by the Office, is designed to support the agency's cost of the
procedure. The petitioner obtained that which he or she sought, the
determination.
Comment 14: One comment suggested that the third sentence of Sec.
11.2(c) be deleted because it would discourage individuals who seek
registration from filing legitimate appeals of an improper decision of
an OED staff member, while not providing any assurance that a decision
by the OED Director would be promptly decided to avoid interfering with
rights of the petitioner or applicant for registration; and if kept,
the phrase "other proceedings" be defined.
Response: The suggestion has been adopted in part. The third
sentence has been amended to delete "including the timely filing of an
application for registration," as being unnecessary. The third
sentence now states "[t]he filing of a petition will not stay the
period for taking other action which may be running, or stay other
proceedings." The language in the third sentence of Sec. 11.2(c),
including "other proceedings," corresponds substantially to the
language of the first sentence of 37 CFR 1.181(f). Inasmuch as the
third sentence now corresponds substantially to the first section of
Sec. 1.181(f), it is believed that the third sentence will not
discourage the filing of legitimate appeals. On the contrary, the third
sentence encourages all applicants for registration to pursue
legitimate actions that are not stayed by the filing of a petition.
Comment 15: One comment suggested that the fourth sentence of Sec.
11.2(c) be revised to state that "[a]ny request for reconsideration of
the OED Director's decision waives a right to appeal * * *."
Response: The suggestion is now moot since all reference to a
request for reconsideration has been removed from Sec. 11.2(c) as
further discussed in response to Comment 16.
Comment 16: Two comments suggested that the fourth sentence of
Sec. 11.2(c) be deleted because it is punitive, unnecessary, denies
due process, and encourages numerous unnecessary appeals to the USPTO
Director because a practitioner dissatisfied with a decision of the OED
Director cannot reasonably risk loss of the right of appeal.
Response: The suggestion has been adopted in part. All reference to
a request for reconsideration has been removed from Sec. 11.2(c). The
fourth sentence of Sec. 11.2(c) has been amended to clarify that "[a]
final decision by the OED Director may be reviewed in accordance with
the provisions of" Sec. 11.2(d).
Comment 17: Two comments suggested that the thirty-day time periods
set in Sec. 11.2 should be increased. One comment suggested that the
Office, absent a compelling reason, consider setting a uniform period
in Secs. 11.2(d) and 11.2(e), for example, the two-month period
found in 37 CFR 1.181, for filing a petition to any USPTO official
seeking review of an action taken by the USPTO and seeking
reconsideration. Another comment suggested that the time in Sec.
11.2(d) be increased to ninety days and be extendable to one hundred
twenty days to provide due process.
Response: The suggestion to adopt a uniform period has been adopted
in part, but the suggestion that the period be extendable has not been
adopted. Section 11.2(d) has been revised to refer to a sixty-day
period for filing a petition from a final decision of the OED Director.
Section 11.2(d) provides that "[a]ny petition not filed within sixty
days from the mailing date of the final decision of the OED Director
will be dismissed as untimely." A thirty-day period is provided for
filing a request for reconsideration. The penultimate sentence of Sec.
11.2(d) provides that a "request for reconsideration of the decision
of the USPTO Director will be dismissed as untimely if not filed within
thirty days from the mailing date of said decision." Section 11.2(e)
has been deleted.
The sixty-day period is independent of the different lengths of the
months, and provides consistency. The sixty-day period has been adopted
wherever possible. Sixty days is substantially the same time period
provided for in Sec. 1.181, and thereby provides sufficient time to
permit individuals and practitioners to determine whether they will
seek review by petition and to prepare a petition.
A thirty-day period is adopted for requesting reconsideration of
the USPTO Director's decision. Under 35 U.S.C. 32, the United States
District Court for the District of Columbia reviews a decision refusing
to recognize or suspending or excluding an individual upon petition
filed within thirty days of the decision. Providing an individual the
same thirty-day period to seek reconsideration is consistent with the
time available to seek review.
Comment 18: One comment suggested that the term "one OED
Director" in Sec. 11.2(e) be revised to read "former OED Director or
an acting OED Director" to provide clarity.
Response: The suggestion is moot since proposed Sec. 11.2(e) has
not been adopted.
Comment 19: One comment suggested that inasmuch as Sec. 11.3(a)
does not define the phrase "OED Director's representative," reference
be made to proposed Sec. 11.40(b) and the phrase be defined in Sec.
11.1.
Response: The suggestion has been adopted in part. Section 11.1 has
been revised to include a definition of the OED Director's
representative. It is unnecessary to reference Sec. 11.40(b).
Comment 20: Five comments suggested that the provisions in proposed
Sec. 11.3(d) regarding qualified immunity not be adopted because the
present rules provide sufficient safeguards, and the proposal may
encourage Office employees to file frivolous complaints.
Response: The suggestion has been adopted. Some states provide by
regulation the proposed safeguards. However, upon further reflection,
it is believed that adequate safeguards are already available.
Accordingly, the proposed Sec. 11.3(d) has not been adopted.
Comment 21: One comment suggested several reasons why the USPTO
Director should draw on persons who are not employees of the USPTO to
serve on the Committee of Enrollment.
Response: The suggestion is now moot since Sec. 11.4(a), which
proposed the use of the Committee on Enrollment in "good moral
character and reputation" determinations has been deleted from Sec.
11.7. Determining the content of the examination is an inherently
governmental function that cannot be assigned to non-governmental
employees.
Comment 22: One comment suggested that in view of provisions in the
North American Free Trade Agreement (NAFTA), Canadian citizens should
be entitled to registration under the proposed Secs. 11.6(a) or
11.6(b) in the same manner as United States citizens.
Response: The suggestion has not been adopted. The provisions of
NAFTA provide for each Party to accord no less favorable treatment to
another party than that it accords, in like circumstances, to its own
service providers, including representation in patent applications. The
NAFTA Services Chapter did envisage phaseout of nationality requirements
for patent attorneys and agents. However, neither Party has phased out the
nationality requirement. Under the treaty, the only recourse for
failure to do so is for other Parties to maintain their requirements.
At this time, the USPTO, in accordance with the treaty, continues to
maintain its requirements, and need not act unilaterally. See NAFTA
Art. 1210.3 (no penalty for phaseout).
Comment 23: One comment suggested that any non-immigrant alien who
is resident in the United States and who has passed the USPTO
registration exam should be eligible to be registered and remain
registered under 37 CFR 11.6(a) or (b) for as long as he or she remains
resident in the United States.
Response: The suggestion has not been adopted. Pursuant to 35
U.S.C. 2(b)(2)(D), persons seeking registration must demonstrate that
they are of good moral character and reputation. Empowering
nonimmigrant aliens to engage in employment or training contrary to
their status under the immigration laws would be inconsistent with the
requirement that they possess good moral character. USPTO's
registration should not create the occasion for violation of the
immigration laws.
Comment 24: One comment suggested that Sec. 11.6 be modified to
strip away all citizenship requirements against a prospective patent
attorney or agent to be registered - or for an existing patent attorney
or agent to maintain his or her registration.
Response: The suggestion has not been adopted. Foreign patent
attorneys and agents may be registered to practice before the Office in
patent cases upon compliance with the provisions of Sec. 11.6(c).
Under Sec. 11.6(c), registration is available if the patent office,
where the foreign attorney or agent is registered and resides, grants
substantially reciprocal privileges to practitioners registered to
practice before the Office. At this time, only the Canadian Patent
Office is recognized as providing substantially reciprocal privileges,
and practitioners registered by both offices benefit from the
reciprocal recognition. Practitioners in other countries may similarly
benefit if the provisions of Sec. 11.6(c) are satisfied.
Comment 25: One comment suggested that any individual registered
under proposed Sec. 11.6(c) should be required to pass the USPTO's
registration examination since this section does not require
familiarity with the USPTO's rules and procedures. The examination
assures that all registered individuals are fully competent to act in
patent matters before the USPTO. The commenter observed that in many
material respects, practice before the USPTO is considerably different
from practice before the Canadian Patent Office (and other patent
offices).
Response: The suggestion has not been adopted. Since about 1934,
the USPTO and Canadian Patent Office have provided for reciprocal
recognition of each other's registered attorneys and agents. Neither
Office has required the attorneys and agents of the other Office to
take and pass their registration examination. Moreover, the Canadian
Patent Office does not require that persons registered to practice
before the USPTO complete a period of service in the Canadian Patent
Office or work in Canada in the area of Canadian patent law, or take
the Canadian qualifying examination prior to registration.
Comment 26: One comment suggested that Sec. 11.6(d) should also
include public use proceedings under 37 CFR 1.292 since these
proceedings, like interference proceedings, allow the taking of
testimony which could be done by unregistered attorneys.
Response: The suggestion has not been adopted. The provisions of
Sec. 11.6(d) empower the Chief Administrative Patent Judge or Vice
Chief Administrative Patent Judge of the Board of Patent Appeals and
Interferences to determine whether and the circumstances under which an
attorney who is not registered may take testimony for an interference
under 35 U.S.C. 24, or under Sec. 1.672. Unlike interference
proceedings, the taking of testimony for a public use proceeding does
not occur under the authority of the Board of Patent Appeals and
Interferences. The USPTO Director may designate an appropriate official
to conduct the public use proceeding, and the official may set the time
for taking testimony. See 37 CFR 1.292. The OED Director, in
consultation with the designated official, may authorize an
unregistered attorney to take testimony for a public use proceeding.
Accordingly, the authority cannot be placed on the Chief Administrative
Patent Judge or Vice Chief Administrative Patent Judge of the Board of
Patent Appeals and Interferences to administer the taking of
depositions in public use proceedings.
Comment 27: One comment said that the Office admits to practice
whole categories of lawyers who are not possessed of the required
technical background. Although no category of lawyers was specified,
the comment refers to practitioners registered under the current
provisions of 37 CFR 10.6(c).
Response: All individuals admitted to practice must demonstrate
that they possess the required scientific and technical background.
Persons seeking registration under Sec. 11.6(c) must demonstrate that
they possess the "qualifications stated in Sec. 11.7," which
includes the scientific and technical training requirements of Sec.
11.7(a)(2)(ii). The same is required under current 37 CFR 10.6(c) and
10.7(a)(2)(ii).
Comment 28: One comment pointed out that although the commentary at
68 Fed. Reg. at 69446 stated that "[p]aragraph (a)(3) of Sec. 11.7
would explicitly place the burden of proof of good moral character and
reputation on the applicant, and provide `clear and convincing' as the
standard of proof," there is no paragraph (a)(3) in Sec. 11.7
corresponding to this statement, and suggested that commentary conform
with the rules.
Response: The comment is correct that Sec. 11.7 does not include
paragraph (a)(3). Section 11.7(b)(1)(iii) establishes the burden of
proof and requires an individual to "provide satisfactory proof of
possession of good moral character and reputation." Individuals
seeking registration have been required by current 37 CFR
10.7(a)(2)(i), and its predecessor rules, to establish to the
"satisfaction" of the Director that they are of good moral character
and reputation. This is unchanged by the new rules and may be met in
most instances by candid answers to all questions in the application
for registration, and production of complete explanations and required
documents in accordance with instructions included in the application.
The Office plans to adopt an application form containing substantially
the same questions that attorneys commonly answer in State bar
applications. Thus, attorneys will submit substantially the same
questionnaire for the State bar, and agents will fill out this
questionnaire for the first time.
Comment 29: One comment suggested that the terms or phrases "a
form supplied by the OED Director," "application for admission,"
"registration application," "complete application,"
"applications," "application," "application form," and
"application form supplied by the OED Director" in Sec. 11.7 be
replaced by "application for registration" to provide clarity and
consistency. It also suggested that the phrase "complete application"
wherever it is used in the proposed rules be changed to be "complete
application for registration" for consistency in terms.
Response: The suggestions have been adopted. Inasmuch as the terms
or phrases "a form supplied by the OED Director," "application for
admission," "registration application," "complete
application," "application," "applications," "application form,"
and "application form supplied by the OED Director" all reference the
application for registration, and the components of a complete
application for registration are set forth in the provisions of Sec.
11.7(b), the terms and phrases have been replaced as suggested. The
change also distinguishes the application for registration from patent
and trademark applications when the term "application" is used in
other rules.
Comment 30: One comment suggested that if registration is to
continue and to fulfill the statutorily required qualifications of
drafting patent applications and claims the OED must reinstate the
essay question format that required demonstration of claim drafting
skills as an integral part of the examination.
Response: The suggestion has not been adopted. Regardless of the
efforts taken to establish standards for grading essay examinations,
the process of grading essays remains subjective and subject to
heightened dispute. Grading an essay examination is an expensive, time-
consuming, resource-intensive program requiring diversion of the
Office's employees to provide a subjective evaluation. Grading essay
examinations inevitably creates uncertainties and the potential for
subjectivity in test answer evaluation. Processing and evaluating 6000
essays would require a massive commitment of USPTO resources without a
concomitant benefit to the patent system. In contrast, both candidates
for registration and the Office benefit from a multiple choice
examination. A multiple choice examination is objectively graded.
Moreover, multiple choice examinations, unlike essay examinations,
cover a broader multitude of topics and elicit the candidate's ability
to distinguish correct from incorrect practices, policies, and
procedures as well as addressing application and claim drafting.
Multiple choice examinations may be administered more frequently than
essay examinations, thereby increasing the opportunity for
registration. The passing rate over the past five years has ranged
between 37% and 72%, and the overall average passing rate was 53.6%.
Despite the fact that in the same period prior examinations were made
public and some questions were reused, the multiple choice examination
has not become a means to become registered by memorization. On the
contrary, the examination provides a reasonable means for safeguarding
the public from incompetent representation.
Comment 31: One comment suggested that the questions on the
proposed examination not be publicly available because if questions are
reused, it would be possible to simply memorize the publicly available
questions and answers, and the examination would not measure a person's
legal and technical competence. Another comment was to assure that the
examination include questions covering 35 U.S.C. 101, 102, 103 and 112.
Response: The suggestions are noted. The comments in the proposed
rules regarding Sec. 1.21 stated that the data bank of questions and
answers would be publicly available. However, the comments for Sec.
11.7(e) said that it would be necessary to cease publication of the
questions and the corresponding answers to reuse questions, and reduce
pressure on the Office staff, as well as preserve the fairness of the
test for later applicants. Any confusion resulting from these
statements is regretted. The data bank of questions and answers will
not be published or otherwise made available to the public. The
registration examination will utilize a data bank of multiple choice
questions that can be reused in subsequent examinations. Further,
everyone practicing in patent cases before the Office must be familiar
with the provisions of 35 U.S.C. 101, 102, 103 and 112. Accordingly,
the examination will include questions covering these sections.
Comment 32: One comment suggested that there should be two or more
questions that contain drawings in every examination to demonstrate
that persons who pass the examination are competent to assist patent
applicants by the ability to read and understand simple drawings,
patents and technical publications. The comment suggested that an
examination without drawings does not fulfill Sec. 11.7(a)(4).
Response: The suggestion has not been adopted at this time.
Presumably, the comment is referencing Sec. 11.7(a)(2)(iii) as there
is no Sec. 11.7(a)(4) in the proposed rules. A drawing is not
necessary to understand the claimed subject matter of every application
as drawings are only required for applications "where necessary for
the understanding of the subject matter sought to be patented." 35
U.S.C. 113. Thus, inclusion of one or two drawings is not required for
the examination to test whether the persons passing the examination are
capable of rendering competent assistance to patent applicants.
Nevertheless, consideration is being given to the development of
questions having drawings for inclusion in future computer-delivered
registration examinations.
Comment 33: One comment suggested that before admitting an
individual to the registration examination, the individual should be
required to complete a minimum period of apprenticeship or work
involving the preparation and prosecution of patent applications before
the USPTO under the supervision of one or more registered
practitioners, that only practitioners registered for at least a
certain number of years should be deemed competent to provide such
supervision, and that compliance be verified by requiring a written
declaration from the candidate and a registered practitioner
supervisor.
Response: The suggestion has not been adopted. Between 1922 and
1934, registration applicants demonstrated their qualifications by
submitting evidence of experience in patent work, such as patent
prosecution. Non-attorneys were required to show three years of
experience preparing and prosecuting patent applications under the
guidance of a registered patent attorney. Attorneys were required to
show actual work experience in patent prosecution, but the experience
was not required to extend over any particular period. The showing of
experience was ordinarily made by affidavit of the registered
practitioner under whom the applicant had worked.
The procedure was administratively difficult due, in part, to the
lack of any objective standards. It is understood that Congressional
correspondence on behalf of individual applicants was voluminous.
Commissioner Robertson, in a 1933 report termed the registration system
based upon submission of affidavits as neither reliable nor
satisfactory. Commissioner Robertson regarded the applicant's showing
of "several examples of his ability to prosecute a patent
application" as "perfunctory" and "certainly not sufficient."
Additionally, the Commissioner cited the required affidavit as being
"subject to the great weakness of friendship between attorneys and the
applicant," and that an "established attorney hesitates to refuse to
make an affidavit as to competency of one of his employees who is
ambitious and is striving to climb the ladder of success." The
practice was ended in 1934 with the introduction of the registration
examination. It would be difficult to avoid the weaknesses in the
apprenticeship system employed prior to 1934 if the Office were to
adopt the proposed apprenticeship or work system, even when coupled
with the registration examination.
Comment 34: Two comments suggested that the location of Sec.
11.7(c) seems to be out of place in the sequence of other provisions.
One suggested that it should be located just before the hearing
provision in Sec. 11.7(j).
Response: The suggestion has been adopted in part. The petition
provision in proposed Sec. 11.7(c) is redundant with the petition
provision in Sec. 11.2(c). Accordingly, the provision for petitions in
proposed Sec. 11.7(c) is unnecessary, and has been removed from this
section, and retained in Sec. 11.2(c). Sections 11.7(b)(2) and 11.8(c)
each addressed the necessity for an individual seeking recognition to
update his or her application for registration. These provisions have
been merged and moved into Sec. 11.7(c).
Comment 35: One comment suggested that Sec. 11.7(d) be subtitled
"Waiver of the registration examination for former Office employees"
followed by subsections (1), (2), etc., to immediately apprise the
reader that the rule is directed to waiver of the registration
examination for former PTO employees.
Response: The suggestion has been adopted. The revision would
apprise individuals who never served in the Office that the provisions
of Sec. 11.7(d) do not pertain to them.
Comment 36: One comment suggested that the phrase "actively
served" in Secs. 11.7(d)(1), (d)(2), and (d)(3) be defined to
resolve whether a person is a "patent examiner" who has or has not
"actively served" in the examining corps. The metes and bounds of
"actively served" are not immediately apparent. The commenter
suggested that the definition would resolve whether the examination
would be waived for a former examining technical center director who
never served as a patent examiner, but served more than four years as
group director at the time of separation from the examining corps, or
for a special program examiner who was not a patent examiner, but who
served more than four years in the examining corps at the time of
separation from the Office.
Response: The suggestion has not been adopted. The practice of
waiving the examination for persons who actively served in the patent
examining corps is well established. "Actively served" is not a new
term of art. It has been used in predecessor rules since at least 1959.
See 37 CFR 10.7(b) (1985), and 37 CFR 1.341(c) (1959). "Actively
served" is found only in Secs. 11.7(d)(1) and (d)(2), and is used
in its ordinary sense. Secs. 11.7(d)(1) and (d)(2) apply to only
former examiners who were serving in the patent examining corps at the
time of their separation from service. Obviously, a technical center
group director who never was a patent examiner is not within the scope
of Secs. 11.7(d)(1) or (d)(2). Similarly, a special program
examiner is not in the patent examining corps, and is not subject to
the provisions of Secs. 11.7(d)(1) or (d)(2). However, they would
be among the "certain former Office employees" addressed in Sec.
11.7(d)(3) for whom waiver of the examination and registration is
available upon a satisfactory showing of the qualifying conditions set
forth in Sec. 11.7(d)(3).
Comment 37: One comment suggested that examining technical center
directors, special program examiners, individuals who served as
Assistant Commissioners for Patents, and administrative patent law
judges at the Board of Patent Appeals and Interferences who have not
"actively served" in the examining corps should be exempt from making
a showing under Sec. 11.7(d)(3) of possessing legal qualifications to
render to patent applicants and others valuable service in the
preparation and prosecution of patent applications. In contrast, three
comments suggested that the proposal in Sec. 11.7(d)(3) to exempt
certain USPTO employees from the registration examination not be
adopted. The latter comments opined that Office employees are only
skilled in the application of rules concerning patentability, have not
practiced patent law, and have no training how to properly describe and
claim an invention. One of the latter comments suggested that the
period of service in the Office be extended to five years to ensure
broad experience.
Response: The suggestions have not been adopted. Many individuals
in the foregoing positions supervise patent examiners and/or have
authority to review and reverse decisions of patent examiners. These
individuals have an opportunity to demonstrate possession of legal
qualifications to render patent applicants and others valuable service
in the preparation and prosecution of patent applications. Their
positions in the Office have exposed them to proper description and
claim practices, and given them the opportunity to evaluate the
practices. Further, their positions and responsibilities enable them to
readily find answers in the Manual of Patent Examining Procedure, rules
and laws.
Mere qualification based on years of service in a position has not
and should not be the standard for waiver of the examination.
Accordingly, Sec. 11.7(d)(3) requires that certain former Office
employees show that they have exhibited a comprehensive knowledge of
patent law equivalent to that shown by passing the registration
examination as a result of having been in a position of responsibility
in the Office, that they are rated at least fully successful in each
quality performance element of their performance plans, and are not
under an oral warning regarding performance elements relating to such
activities at the time of separation from the Office. Moreover, waiver
of the examination is not automatic; it is in the discretion of the OED
Director. For that purpose the second sentence in each of Secs.
11.7(d)(1), 11.7(d)(2) and 11.7(d)(3) have been revised by replacing
the term "would" with the term "may." Further, Secs.
11.7(d)(1) and 11.7(d)(2) are revised to delete Secs.
11.7(d)(1)(v) and 11.7(d)(2)(iv), which provided for waiver of the
criteria of these sections upon a showing of good cause. Any
individuals believing the requirements of Secs. 11.7(d)(1) or
11.7(d)(2) should be waived may avail themselves of the provisions of
Sec. 11.3, which provides the standard for suspension of any
requirement of the regulations in Part 11 that is not a requirement of
statute.
Waiver of the examination is not automatic for former patent
examiners. Former patent examiners have been required to take the
examination where there is evidence that they did not possess the legal
qualifications to render patent applicants and others valuable service
in the preparation and prosecution of patent applications. See Legal01
decision in the FOIA Reading Room of the Office Web site at
www.uspto.gov/web/offices/com/sol/foia/oed/legal/legal.htm. The same
will apply to former Office employees in all positions. The public and
Office must be assured that the examination is waived only in
appropriate circumstances. Accordingly, Sec. 11.7(d) requires
comprehensive knowledge of patent law equivalent to that shown by
passing the registration examination, that the individual be rated at
least fully successful in each quality performance element of his or
her performance plan for their position for the last two complete
rating periods in the Office, and that the individual not be under an
oral warning regarding performance elements relating to such activities
at the time of separation from the Office.
Comment 38: One comment inquired whether administrative patent
judges at the Board of Patent Appeals and Interferences would qualify
for registration under Sec. 11.7(d)(3)(i)(A) when they leave the
Office and wish to be registered to practice, and suggested a section
be added to Sec. 11.7 that would cover Administrative Patent Judges.
Response: This suggestion has not been adopted. Upon leaving the
Office
administrative patent judges may be registered under the provisions of
Sec. 11.7(d)(3)(i)(A).
Comment 39: Four comments suggested that Sec. 11.7(e) not be
adopted. Three of the comments suggested that the Office continue to
permit substantive review and regrading of registration examinations.
One comment suggested that perhaps applicants would be willing to
entertain a slightly higher examination cost to maintain the current
system. Another comment said that the proposed process could be
punitive. Two comments said denial of regrades would prevent applicants
from receiving due process if a question is incorrectly graded. In
contrast, another comment said that while the elimination of regrades
perhaps meets the minimal requirements to pass muster under law, the
provisions of Sec. 11.7(e) seem to miss the element of fundamental
fairness embodied in the present system, that is usually the
cornerstone of PTO rules and practice. One comment opined that Sec.
11.7(e) is an effort to minimize the burden of USPTO personnel in
reviewing examination results, and its effect may be to ignore and/or
cover up errors in the examination or in the manner that the
examination was graded, and inequitably transfer the burden of Office
errors to registration applicants. One comment said the possibility of
regrades being arbitrary and capricious could arise only if the
examination was in a format other than multiple choice.
Response: The suggestions have not been adopted. Thirty states and
the Northern Mariana Islands do not have any provision for regrading a
bar examination, either prior or subsequent to the publication of the
grades. Many of the states that do provide regrades provide so only in
limited circumstances that will not arise in connection with a
computerized system of delivering a multiple choice examination.
Regrades are not required where the examination is offered again,
particularly as frequently as the USPTO plans. Applicants are afforded
due process by the ability to sit for the examination again. See, e.g.,
Lucero v. Ogden, 718 F.2d 355 (10th Cir. 1983), cert. denied, 465 U.S.
1035, 79 L. Ed. 2d 706, 104 S.Ct. 1308 (1984) ("Courts have
consistently refrained from entering the arena of regrading bar
examinations when an unqualified right of reexamination exists.").
Applicants failing the computerized registration examination will
be able to retake the examination more frequently than those failing a
State bar exam. Those who fail the examination can take it again in
thirty days. The benefit to applicants of providing frequent
examinations outweighs the costs of eliminating regrades. It typically
requires several months for regrade results to be released. An
applicant who retakes and passes the examination may be registered in
less time than it would have taken to obtain the regrade result.
Limiting access to the questions will not deny the unsuccessful
applicant equal protection of the laws. The Multistate Bar Examination
(MBE), like the registration examination, is a multiple choice
examination. Questions on the MBE are reused in later years. Inasmuch
as some of the questions appear in following years, the questions must
be kept secret in order to preserve the fairness of the test for later
applicants. See Fields v. Kelly, 986 F.2d 225, 227 (8th Cir. 1993). An
unsuccessful candidate also is not deprived of a property right without
due process by limiting access to the questions. The provision of Sec.
11.7(e) of providing an opportunity to review the examination under
supervision without taking notes affords the applicant a hearing at the
administrative level. Id. at 228.
The USPTO will take precautions to ensure the accuracy of questions
and answers. Office employees with expertise in various Office
organizations, including the Office of the Solicitor, Patent
Cooperation Treaty Legal Affairs, Office of Patent Legal
Administration, and the Board of Patent Appeals and Interferences,
draft the examination questions. All the questions are multiple choice,
and each addresses the patent laws, rules and procedures as related in
the Manual of Patent Examining Procedure. Different employees then vet
the questions to ensure that each question has a correct answer. The
employees vetting the questions are drawn from the editorial staff of
the MPEP, the Office of the Solicitor, the Board of Patent Appeals and
Interferences, and Quality Assurance Supervisory Primary Examiners.
The examination will be administered by a commercial entity with
extensive experience in administering computerized examinations. An
examination will include 100 questions. After an examination is
administered, the statistical performance of each question in the group
of 100 questions is reviewed and evaluated by testing experts before
the question is included in the computation of each applicant's score.
The questions will be reviewed psychometrically to identify questions
that appear too difficult. Psychometric analysis involves comparison of
the results of each question in the top fifty percentile with the
bottom fifty percentile of applicants, and shows the relative
difficulty of each question. For example, as in the past, where a
psychometrically significant number of applicants passing the
examination select an incorrect answer to a question, the question is
subject to content review by the Office. This corresponds to the
internal review conducted by eleven states before publication of their
bar exam results. This final statistical review is conducted to ensure
that each question is accurate and psychometrically sound. Based upon
the review, corrective action may be warranted, including withdrawal of
the question. The questions are all objective-based, selected-response
items. Some questions have been used in previous versions of the exam.
Over time, each collection of 100 questions will include a number of
previously used and reviewed questions, as well as new questions. The
new questions will undergo the same psychometric analysis and review
necessary to assure that the examination is fair.
Comment 40: One comment opined that adoption of Sec. 11.7(e) would
delay feedback from registration candidates, and eliminate both the
income generated by the regrade process as well as the teaching tool
provided by the regrades posted on the Office's Web site.
Response: The comment is not persuasive. The feedback received by
the psychometric analysis provided by the commercial entity will be at
least as fast as the feedback now received from the candidates.
Psychometric analysis involves comparison of the results on each
question of the top fifty percentile with the bottom fifty percentile
of applicants, and shows the relative difficulty of each question. The
Office will be able to review psychometric feedback received from the
commercial entity as frequently as each week. Questions appearing to be
too difficult are again reviewed after the examination to ascertain if
there is a problem that needs to be addressed, as opposed to being a
difficult question. For example, the question would be reviewed to
ascertain if anything is misleading or incorrect in the body of the
question or in the answer options, if it is readable, or if there is a
change or inconsistency in the materials in the MPEP.
The regrade program is not a source of income to the Office. It is
an expensive, time-consuming, resource-intensive program requiring
diversion of the Office's employees who could be otherwise occupied
deciding petitions, representing the Office in court, and examining
patent applications. Diversion of these resources to process and decide
regrades does not optimize the USPTO's accomplishment of its statutory
mission.
The value of posted regrade decisions as a teaching tool decreases
with the passage of time since the patent laws, rules, and procedures
change. A collection of regrade decisions can be found on the Office
Web site in the Freedom of Information Reading Room. However, the
continued posting of the questions has no relation to their value.
Nothing on the Web site distinguishes between decisions addressing
laws, rules and procedures that are currently followed and those no
longer followed.
Comment 41: One comment opined that if the outsourced examination
contract is limited to a sole source provider, the Office would be
subject to further allegations of supporting arbitrary and capricious
decisions regarding best answers, or other administrative
interpretations within the USPTO.
Response: The comment is unpersuasive. The commercial entity,
selected through full and open competition, does not create the
questions or select the correct answers to the questions. As discussed
above, the questions are developed within the Office. The examination
will be delivered on computers at sites operated by the commercial
entity. The commercial entity has extensive experience in administering
examinations by computer. Every reasonable precaution has been taken to
assure that the questions are not incorrectly graded. All questions and
answers are carefully reviewed by the Office to assure that the answer
selected by those in the Office vetting the question is the answer
identified by the computer to accept as correct.
Comment 42: One comment opined that a "no error" grading of
certification examination is unwarranted within the USPTO, and
suggested that the Office, like others licensing professionals,
including certified public accountants and professional engineers,
utilize passing grade levels of approximately 70%.
Response: In referring to the "certification examination", it is
presumed that the commentator is referring to the registration
examination. It is also presumed that " `no error' grading" refers to
requiring candidates to correctly answer all questions. However, there
is no proposal to require candidates to correctly answer all questions
on the registration examination to pass the examination. The Office
plans to continue to use a passing grade of 70%. The Office's proposal
to use a form of on-line self-correcting examination as one means of
delivering continuing legal education remains subject to comment.
Comment 43: Four comments opposed the elimination of provisions for
regrading examinations in Sec. 11.7, at least to the extent that
questions in the examination should continue to be subject to review
for correctness, readability and fairness; the comment urged that the
use of Office Model Answers assured only uniformity, that it is only
reasonable and fair to require the Office to regrade/review questions
that it has developed, and an applicant should have the right to appeal
the result of their exam because, given the nature of patent practice,
there will be occasions where there may be more than one correct
answer.
Response: The suggestion to retain regrade is not adopted. The
suggestion to allow limited access to the questions to review the
questions is permitted to the extent provided in Sec. 11.7(e). As
discussed above, continuing the regrade program is not a reasonable
expenditure of agency resources. Resources used to process regrades
must be devoted to the processing of a backlog of over 500,000 patent
applications, as well as petitions and appeals. Diversion of these
resources to process and decide regrades is not the best use of Office
resources. As also discussed above, questions will be psychometrically
reviewed to identify those requiring additional, closer review. The
psychometric analysis of answers will enable the Office to objectively
identify questions that may have issues of correctness, readability and
fairness, and to resolve the issues. Also, as in the past, corrective
action is taken when warranted, such as by withdrawing a question.
Moreover, elimination of regrades conforms to the practice in a
majority of State bars.
Comment 44: One comment questioned keeping the questions and
answers confidential and another suggested that it would constitute
undue hardship to require that applicants travel to a location to
review test results.
Response: The suggestion has not been adopted. The questions and
answers will be maintained in confidence. This is consistent with
confidentiality with which the Multistate Bar Examination is
maintained. Maintaining the registration examination in confidence
supports the integrity of the examination inasmuch as the questions can
appear in following months or years. By maintaining confidentiality, no
candidate has the advantage of memorizing questions and answers. The
multiple choice, computer-based examination will use questions selected
from a large database of questions and answers that will not be
publicly available. This will assure that passing the examination
depends upon the ability to spot issues and determine a substantively
sound result, rather than upon the ability to memorize questions and
answers.
Comment 45: One comment, apparently based on the experience with
regrades of two other persons, said that their failure was unjustified;
that in one case the model answers to one of the essay questions was
simply wrong; and in the other case the examination grader did not
recognize the candidate's way of writing of the letter "t" (European
candidate) and interpreted each instance of this letter as a
misspelling.
Response: The comments pertain to results of examinations that were
based on essay questions and answers, which have not been used for
several years. As the examination is now multiple choice, the
possibility of subjectivity in the grading of essay answers has been
eliminated.
Comment 46: The summary of Sec. 11.7(g) at 68 FR 69449 sought
comments regarding two options for determining good moral character.
Four comments favored the second option, which gives deference to State
bar determinations for those applicants who are attorneys and reserves
authority by the Office for further investigation in the event of a
substantial discrepancy between information given to the State bar and
information given to the Office.
Response: The suggestion has been adopted. To effectuate the
procedure and policy, Sec. 11.7(g)(1) is amended to provide that
"[a]n individual who is an attorney shall submit a certified copy of
each of his or her State bar applications and moral character
determinations, if available." A new paragraph is added, designated
Sec. 11.7(g)(2)(ii), which provides "[t]he OED Director, in
considering an application for registration by an attorney, may accept
a State bar's character determination as meeting the requirements set
forth in paragraph (g) of this section if, after review, the Office
finds no substantial discrepancy between the information provided with
his or her application for registration and the State bar application
and moral character determination, provided that acceptance is not
inconsistent with other rules and the requirements of 35 U.S.C.
2(b)(2)(D)."
Comment 47: One comment suggested that for agent practitioners, the
Office should require a showing of good moral character consistent with
that required by a majority of State bars, that the Office should gather
the same information as gathered by the majority of State bar applications,
that the information should be included as part of the application for non-
attorneys to practice before the Office, and that the Office use this
information to conduct an investigation of moral character that is
consistent with that made by the majority of State bars.
Response: No regulatory provision is necessary to implement the
suggestion. Plans are under way to change the application for
registration to gather the same essential information from non-attorney
applicants as is gathered by a majority of State bar applications. Any
necessary investigation will be conducted.
Comment 48: One comment suggested that attorneys and non-attorneys
be subject to same procedures for determining good moral character and
reputation by requiring an attorney denied admission to a bar for lack
of good moral character and reputation to inform the Office in the
application for registration, that the Office should request a
certificate of good standing from every bar where the applicant is a
member to confirm whether an attorney is a member in good standing, and
that at least five character affidavits should be requested from each
non-attorney applicant so the treatment of both types of applicants
would be on somewhat an equal footing.
Response: As discussed above, plans are under way to change the
application to gather from non-attorneys the same essential information
as is obtained by a majority of State bar applications. Non-attorneys
will have to disclose the same information. The application for
registration already requests a certificate of good standing from the
highest court of a state, and inquires whether the applicant has been
suspended or disbarred from the practice of law on ethical grounds.
Comment 49: Two comments suggested that the first option, namely
that the Office give deference to the State bars by permitting patent
attorneys to submit a copy of their State bar application and moral
character determination, would be preferable. One comment opined that
the first option would relieve the Office of an apparently unnecessary
burden unless experience has indicated that such an approach could
cause problems of some undefined character. The other comment opined
that there seems to be no need for the Office to establish new
procedures and require new personnel to administer those procedures
when the individual State bars already perform the same task and it has
not been shown that simply giving deference to a determination by the
State bars would in any way permit Office registration of unqualified
candidates.
Response: The suggestion has not been adopted. While accepting a
State bar's determination on moral character without further review
appears to be administratively attractive, experience indicates that
the existence of substantial discrepancies can be problematic. A
registration application might disclose information that would warrant
a disciplinary proceeding. If the Office did not make provision to
disallow registration of such an applicant, then following
registration, it would be necessary to admit a practitioner and
initiate a disciplinary action. Such a step would create a situation in
which an attorney or agent whom the Office should have denied
registration is representing clients until disciplinary proceedings are
concluded. The disciplinary action requires devotion of additional
personnel and expenditure of time and funds that would not otherwise be
necessary in an enrollment proceeding to protect the public by
suspending or excluding the individual. Moreover, the burden of proof
shifts in a disciplinary action. An enrollment applicant has the burden
of showing that he or she is of good moral character and reputation,
whereas in a disciplinary action the OED Director must demonstrate a
violation of the disciplinary rules. By following the first option, as
opposed to the second, the Office fulfills the responsibility Congress
placed on the Director to protect the public while not duplicating
efforts already undertaken by the State bars.
Comment 50: One comment suggested that the good moral character
determination for both attorneys and agents be administered by the
Office in a manner similar to that utilized by the National Council of
Examiners for Engineering and Surveying (NCEES), a non-profit
organization, whose membership consists of engineering and land
surveying licensing boards for all states and territories of the United
States. These member boards represent all states and U.S. territorial
jurisdictions. The suggestion is that the Office utilize the
organizational model of NCEES by having member boards representing all
State bar associations serve as a central body for maintaining
registered practitioners' representation records comprising pertinent
state and Office information. A practitioner's representation record
would contain some combination of NCEES-type records and State bar
records including professional references, employment verifications,
licensure information, and State bar applications, which are all
determinants of moral character. The comment also suggested that the
Office would share information with State bar associations regarding
the conduct of "registered" trademark practitioners for enforcement
of ethical standards at the state level.
Response: The suggestion has not been adopted. Congress placed on
the Director of the USPTO the primary responsibility of determining who
would be recognized to practice before the Office in patent cases and
protecting the public. See 35 U.S.C. 2(b)(2)(D). The maintenance of the
register of registered patent attorneys and agents is an inherently
governmental function that cannot be performed by non-employees.
The Office already shares with State bars information regarding
conduct of registered practitioners for enforcement of ethical
standards at the state level. See 37 CFR 10.159. Although the Office
does not register trademark practitioners, the Office does share with
state bar associations information about the attorneys for enforcement
of ethical standards at the State level. See 37 CFR 10.159.
It is understood that NCEES has a Records Program that serves as a
verifying agency for the engineer or land surveyor who is seeking
multiple-jurisdiction licensure. Through this program, an NCEES Council
verifies and houses a record holder's file, which contains the college
transcripts, licensure information, professional engineer or surveyor
references, and employment verifications. The Office will consider
whether and how it may communicate with NCEES to obtain records
regarding applicants for registration.
Comment 51: One comment suggested that Sec. 11.7(g), which permits
the OED Director to list the names of proposed registrants on the
Internet and make inquiry regarding the moral character of the
individuals listed, not be adopted because it is a tremendous invasion
of privacy; and further suggested that the Office should not be
involved with regulating moral conduct when it does not concern matters
before the Office, citing misdemeanor cases, such as shoplifting or
drug dependency, as examples of matters with which the Office should
not be concerned.
Response: The suggestion has not been adopted. The statute requires
the Office to consider "reputation" of prospective attorneys and agents.
In furtherance of that mandate, the Office has long published in the
Official Gazette the names of applicants for registration seeking comments
regarding their qualifications. The Official Gazette is published on
the Office's Web site on the Internet. The provision has been moved to
Sec. 11.8(a), and codifies that which has long occurred with the
publication of the Official Gazette in paper and on the Internet.
The Office agrees that the Office should not be involved with
regulating moral conduct when it does not concern matters before the
Office. Nevertheless, there are instances where conduct not directly
occurring in the representation of others before the Office has a nexus
with the person's moral character for purposes of representing others;
for example, drug dealing, and wire or insurance fraud. There are a
number of cases where State bars have denied admission to persons whose
conduct involves the conduct of the kind addressed by the commenter.
See Moral 03 and Moral 04 decisions in the FOIA Reading Room of the
Office Web site at
www.uspto.gov/web/offices/com/sol/foia/oed/moral/moral.htm.
Comment 52: One comment suggested that Sec. 11.7(g)(1), which
requires an individual seeking recognition to "answer all questions,"
clarify the source of the questions.
Response: The suggestion has been adopted. The first sentence of
Sec. 11.7(g)(1) has been revised to state "answer[ing] all questions
in the application for registration and request(s) for comments issued
by OED."
Comment 53: One comment suggested deletion of the third sentence in
proposed Sec. 11.7(g)(3), which states, "If the individual seeking
registration or recognition is an attorney, the individual is not
entitled to a disciplinary proceeding under Secs. 11.32-11.57 in
lieu of good moral character proceedings under paragraphs (j) through
(m) of this section." The commenter noted that only the OED Director
can initiate a disciplinary proceeding if the Committee on Discipline
finds probable cause, and it is not clear how an attorney who is not
yet a registered practitioner would be subject to the disciplinary
proceedings.
Response: The suggestion has been adopted. Section 11.7(g)(3) in
the proposed rules has been renumbered Sec. 11.7(g)(2)(i) in the final
rules. The third sentence of proposed Sec. 11.7(g)(3) has been omitted
from the final rule.
Comment 54: One comment suggested that in the fourth sentence of
Sec. 11.7(g)(3), the phrase "OED Director" be changed to "Office of
Enrollment and Discipline" since in all likelihood questions will be
sent through a staff attorney in OED.
Response: The suggestion has been adopted in part. The fourth
sentence of proposed Sec. 11.7(g)(3) is the third sentence of Sec.
11.7(g)(2)(i) in the final rule. The reference to "OED Director" has
been changed to "OED."
Comment 55: One comment suggested that a typographical error be
corrected in the last sentence in Sec. 11.7(h) before the beginning of
subsection (1).
Response: The suggestion is now moot inasmuch as the last sentence
of proposed Sec. 11.7(h) has been deleted.
Comment 56: One comment inquired whether "good moral character"
has the same meaning as "good moral character and reputation."
Another comment suggested that the entire phrase "good moral character
and reputation," which appears in 35 U.S.C. 2(b)(2)(D), be defined.
Response: The latter suggestion has been adopted. Under 35 U.S.C.
2(b)(2)(D), an individual is required to possess "good moral character
and reputation." "Good moral character and reputation" is defined in
Sec. 11.1. Webster's Third New International Dictionary defines
"reputation" as "the condition of being regarded as worthy or
meritorious" (second version under the first definition), and is the
source for the definition applied to reputation in the phrase "good
moral character and reputation."
Comment 57: One comment opined that Secs. 11.7(h)(3) and
11.7(h)(4) contain definitions of good moral character that do not
appear to be within the scope of the definition in proposed Sec.
11.7(h).
Response: Good moral character is now defined in Sec. 11.1, and
continues to mean the "possession of honesty and truthfulness,
trustworthiness and reliability, and a professional commitment to the
legal process and the administration of justice."
The definition of good moral character is inclusive of the conduct
referenced in Secs. 11.7(h)(3) and 11.7(h)(4). Section 11.7(h)(3)
refers to "[a]n individual's lack of candor in disclosing facts
bearing on or relevant to issues concerning good moral character and
reputation when completing the application or any time thereafter."
Lack of candor is within the ambit of "honesty and truthfulness,
trustworthiness and reliability." Similarly, Sec. 11.7(h)(4) refers
to an "individual who has been disbarred or suspended from practice of
law or other profession, or has resigned in lieu of a disciplinary
proceeding * * *." Disbarment reflects a lack of the same traits
required for good moral character and reputation.
Comment 58: One comment suggested that the Office define what it
considers to be a violation of "moral turpitude" based on decisions
in disciplinary proceedings before the Office and add the definition to
Sec. 11.1 inasmuch as "moral turpitude" has been open to
interpretation by State bars and the disciplinary courts.
Response: The suggestion has not been adopted. The fact that State
bars and courts of each State interpret their own State laws and
identify those acts that constitute moral turpitude reflects a wide
variety of differences among laws under which prosecution may be
brought. Federal laws raise similar issues. A wide variety of fact
patterns and underlying laws come before OED for consideration. Courts
in the state where an applicant's conduct occurred may have issued a
decision that an act does or does not constitute moral turpitude. There
may be no decision regarding the act in that state. Courts in another
state may have issued a decision based on the same or similar law
regarding the same or similar conduct. It is unlikely that a rule could
be derived from the decisions issued by the state courts that would be
clear and unequivocal for all cases.
It seems preferable to allow applicants to make their presentations
with respect to concrete circumstances and the particular laws under
which the conviction occurred. An applicant may present such analyses
of case law and past circumstances for consideration as the applicant
deems best to characterize his or her situation. The Office will
consider the applicant's presentation as well as relevant case law from
the same and other jurisdictions. Such flexibility is most likely to
lead to fair results.
Comment 59: One comment pointed out that although Sec. 11.7(h)(1)
includes a misdemeanor in the definition of "a crime," the definition
of "crime" in Sec. 11.1 does not include a misdemeanor. It is
suggested that the rules be consistent in defining repeated terms.
Response: The suggestion has been adopted. The definition of
"crime" in Sec. 11.1 has been revised to include "any offense
declared to be a felony or misdemeanor by Federal or State law in the
jurisdiction where the act occurs."
Comment 60: One comment suggested that the phrase "convicted for
said felony" in the third sentence of Sec. 11.7(h)(1) should read
"convicted of said felony."
Response: The suggestion has been adopted, and the sentences are
restructured.
Comment 61: One comment suggested that the term "compelling proof"
and the phrase "at a minimum a lengthy period of exemplary conduct" in
Sec. 11.7(h)(1) be defined.
Response: The suggestion has been adopted in part. Section 11.7 has
been revised to delete provisions calling for "compelling proof" and
"clear and convincing" evidence of good moral character. Section 11.7
will require individuals to establish to the satisfaction of the OED
Director that they are of good moral character. This standard is set
forth in the current rules at 37 CFR 10.7(a)(2)(i). Thus, new Sec.
11.7 will continue to apply the same standard whether the individual is
a first time applicant, a disbarred attorney, or convicted felon.
Applicants in the latter two instances must make a more substantial
showing than a first time applicant with no such record because of the
need to overcome evidence weighing against a finding of good moral
character. Case law recognizes that following disbarment, the burden of
proving good moral character is substantially more rigorous for an
attorney seeking reinstatement, even in a different jurisdiction, than
for a first time applicant. See In re Menna, 905 P.2d 944 (Cal. 1995).
As in the case of reinstatement after disbarment, even a first time
applicant has a heavy burden of showing good moral character after
conviction of a felony. See In re Gossage, 5 P.3d 186 (Cal. 2000); In
re Dortch, 486 S.E.2d 311 (W.Va. 1997).
Section 11.7(h)(1) has been revised to delete the provision for a
lengthy period of exemplary conduct. Section 11.7(h)(1)(ii)(B) provides
a two-year period following completion of the sentence, deferred
adjudication, and period of probation or parole, whichever is later,
for demonstrating good moral character and reputation.
Comment 62: One comment suggested that the term "provisions" in
the first sentence of Sec. 11.7(h)(1)(ii) be changed to
"presumptions" since it appears that sections (A) and (B) thereunder
are presumptions that will be made by the Office for an individual who
has been convicted of a felony or misdemeanor and is seeking
registration. The comment further suggested that in Sec.
11.7(h)(1)(ii)(B), the expression "apply for or be registered" be
amended to read "apply for registration or be registered" for
grammatical correctness. It was still further suggested that since
proposed paragraph (C) in Sec. 11.7(h)(1)(ii) is not a presumption, it
should be renumbered Sec. (h)(iii) and that proposed Sec.
11.7(h)(iii) be changed to Sec. 11.7(h)(iv). Further, it was suggested
that the expression "an application" in proposed Sec.
11.7(h)(1)(iii) be changed to "a complete application for registration
and the fee required by Sec. 1.21(a)(1)(ii)."
Response: The suggestions have been adopted in part. In Sec.
11.7(h)(1)(ii), the term "provisions" is changed to read
"presumptions." In Sec. 11.7(h)(1)(ii)(B), the expression "apply
for or be registered" is revised to read "apply for registration."
The numbering of paragraph (h)(1)(ii)(C) in Sec. 11.7 is changed to
paragraph (h)(1)(iii), the expression "an application" in proposed
Sec. 11.7(h)(1)(iii) is changed to "a complete application for
registration and the fee required by Sec. 1.21(a)(1)(ii) of this
subchapter," and the numbering of Sec. 11.7(h)(1)(iii) is changed to
Sec. 11.7(h)(1)(iv).
Comment 63: One comment suggested that the phrase "from drug or
alcohol abuse or dependency" be added after "recovery" in Sec.
11.7(h)(2) to clarify that recovery is from past, as opposed to
present, drug or alcohol abuse or dependency.
Response: The suggestion has not been adopted. Section 11.7(h)(2)
requires that an individual's record be reviewed as a whole to see if
there is a drug or alcohol abuse or dependency issue. Section
11.7(h)(2) covers both past and present abuse and dependency issues.
Accordingly, recovery should encompass past or present abuse and
dependency issues.
Comment 64: One comment suggested that the procedure in Sec.
11.7(h)(2) for holding an application for registration in abeyance for
an applicant who has not established a record of recovery from drug or
alcohol dependency, and manner by which an agreement for recovery from
the dependency is "initiated" and confirmed can be clarified by
ending the last sentence at "time," and adding the following
sentence: "If the individual accepts the offer, the individual and the
OED Director shall execute an agreement specifying (i) the period of
time the application for registration will be held abeyance, (ii) the
conditions regarding the initiation and confirmation of treatment; and
(iii) conditions that constitute evidence that recovery is confirmed."
Response: The suggestion is now moot inasmuch as the proposal for
holding an application in abeyance while an individual complies with a
recovery agreement is not adopted. The OED Director will provide the
individual with an opportunity to withdraw his or her application in
order to avoid its denial with attendant consequences under Sec.
11.7(k). The individual will be notified that he or she may resume the
application for registration or reapply when the individual is no
longer abusing alcohol or drugs and can satisfactorily demonstrate that
he or she is complying with treatment and undergoing recovery. Under
Sec. 11.8(b), the individual may resume completion of the application
for registration without taking the examination again if, within two
years of mailing date of a notice of passing the examination, the
individual files a satisfactory showing and complies with the
provisions of Sec. 11.8. An individual would reapply if a satisfactory
showing is made outside the two-year period.
Comment 65: One comment suggested that Sec. 11.7(h)(4) be expanded
to include, in addition to a suspended or disbarred attorney, a non-
attorney who, for instance, was disciplined by an institution or
government authority for acts of misconduct involving moral character,
e.g., students, stock brokers, CPA's, doctors. It was also suggested
that Sec. 11.7(h)(4) be revised to organize its provisions to
separately and clearly identify individuals ineligible for registration
and their respective ineligibility periods, the documents and fees to
be filed for registration, as well as the presumptions that arise from
the discipline or resignation and the available defenses.
Response: The suggestion has been adopted in part. The provisions
of Sec. 11.7(h)(4) have been expanded to include individuals who are
disbarred, suspended or have resigned in lieu of disciplinary action in
the legal profession as well as other professions. Further, the
provisions have been extensively reorganized to more clearly identify
the ineligible individuals, their respective ineligibility periods, and
the fees and documents they must file. The burden of establishing
reform and rehabilitation has been clarified to require a satisfactory
showing, which is consistent with Sec. 11.7(h)(1).
Comment 66: One comment suggested that to avoid confusion Sec.
11.7(i) should not introduce the term "applicant" for the first time,
and that "applicant" be changed to "individual."
Response: The suggestion has been adopted.
Comment 67: One comment suggested that in Sec. 11.7(i)(2)(xii),
the word "religious" replace the word "church" as a sponsor of
"programs designed to provide social benefits or to ameliorate social
problems," because "church" is limited to a body of Christians.
Response: The suggestion is now moot. Proposed Sec. 11.7(i)(1) and
the second and third sentences of proposed Sec. 11.7(i)(2) have been
deleted. The first sentence of proposed Sec. 11.7(i)(2) has been
renumbered Sec. 11.7(i) in the final rules. Proposed Sec.
11.7(i)(2)(viii) has been deleted, and the remaining
proposed Secs. 11.7(i)(2)(i) through 11.7(i)(2)(xiii) have been
renumbered Secs. 11.7(i)(1) through 11.7(i)(12) in the final
rules. Section 11.7(i)(11) in the final rules, which is based on
proposed Sec. 11.7(i)(2)(xii), is revised to eliminate any
characterization, such as "church," limiting the identity of
sponsors.
Comment 68: One comment suggested that the language of the first
two sentences of Sec. 11.7(j) be revised as follows: If, after an
investigation of moral character and reputation, the OED Director is of
the opinion that the evidence of record does not establish that the
individual seeking registration possesses good moral character and
reputation, the OED Director shall issue to the individual a notice to
show cause with reasons why the individual should not be registered.
The notice shall give the individual the opportunity for a hearing
before the Committee on Enrollment or withdrawing his or her
application for registration.
Response: The suggestion has been adopted in part. As discussed
with regard to Sec. 11.4, the Office will no longer provide for a
Committee on Enrollment, and the proposal to provide for oral
enrollment hearings will not be adopted. The first two sentences have
been replaced by the following provisions: "[i]f, following inquiry
and consideration of the record, the OED Director is of the opinion
that the individual seeking registration has not satisfactorily
established that he or she presently possesses good moral character and
reputation, the OED Director shall issue to the individual a notice to
show cause why the individual's application for registration should not
be denied." The "individual shall be given no less than ten days from
the date of the notice to reply. The notice shall be given by certified
mail at the address appearing on the application if the address is in
the United States, and by any other reasonable means if the address is
outside the United States." Following "receipt of the individual's
response, or in the event of the absence of a response, if any, the OED
Director shall consider the individual's response and the record, and
determine whether, in the OED Director's opinion, the individual has
sustained his or her burden of satisfactorily demonstrating that he or
she presently possesses good moral character and reputation."
Comment 69: One comment objected to the term "interrogated" in
Sec. 11.7(j)(1) as sounding like an inquisition, and suggested that
the phrase "to be sworn and interrogated" be changed to read "to
provide sworn testimony"; and suggested that "an adverse decision"
is indefinite and should be changed to "a decision denying recognition
based on lack of good moral character and reputation."
Response: The suggestion is moot since proposed Sec. 11.7(j)(1)
has not been adopted.
Comment 70: One comment pointed out that Sec. 11.7(j)(2) needs to
clarify that the "individual" is not the "particular person," and
suggested that the term "individual" be changed to read "individual
seeking registration."
Response: The suggestion is moot since proposed Sec. 11.7(j)(2)
has not been adopted.
Comment 71: One comment suggested that Sec. 11.7(j)(2)(ii) refers
to "rights" listed in "paragraph (j)(2)(A)," whereas Sec.
11.7(j)(2(ii) should reference Sec. 11.7(j)(2)(i), which is directed
to "rules of procedure."
Response: The suggestion is moot since proposed Sec. 11.7(j)(2)
has not been adopted.
Comment 72: One comment noted the use of the terms
"recommendation" and "decision" in Sec. 11.7(j)(3) is confusing
and the need for consistency.
Response: The suggestion is moot since proposed Sec. 11.7(j)(3) as
well as proposed Secs. 11.7(j)(4) and 11.7(j)(5) have not been
adopted.
Comment 73: One comment suggested that the first sentence of Sec.
11.8(a) be clarified to inform an individual who passed the examination
that he or she has two years within which to complete registration by
revising the sentence to read "an individual passing the registration
examination who does not comply with the requirements of paragraph (b)
of this section within two years after the date on a notice of passing
the examination will be required to retake the registration
examination."
Response: The subject of the comment has been moved to Sec.
11.8(c), which has been revised to reflect this comment.
Comment 74: One comment noted that Sec. 11.8(b) requires that an
attorney or agent must submit a certificate of good standing from the
bar of the highest court of a state, whereas this would not be possible
for agents.
Response: The suggestion has been adopted. Section 11.8(b) has been
amended to require only attorneys to submit a certificate of good
standing from the bar of the highest court of a state.
Comment 75: One comment suggested the requirement in Sec. 11.8(b)
that attorneys and agents must file a completed form to obtain the
Office's authorization to use a digital signature as a prerequisite for
registration before the Office is premature and unnecessary. The
purpose for the digital signature is to facilitate electronic filing;
however, electronic filing is, currently, not required. Moreover, it is
not clear why a registration applicant must complete a form for a
digital signature in order to be registered to practice before the
Office, yet currently registered attorneys and agents have no such
requirement, and a form for a digital signature can be completed when
it is appropriate for that attorney or agent to do so.
Response: The suggestion has been adopted. Section 11.8(b) has been
revised to remove the provision requiring "a completed form to obtain
the Office's authorization to use a digital signature."
Comment 76: One comment suggested that Sec. 11.6(c) appears to
conflict with State bar rules, which do not have residency
requirements, that the proposed rules do not appear to prohibit aliens
who no longer reside in the United States to remain registered, and
suggested that aliens no longer residing in the United States may
continue to be registered and practice before the Office, that such
continued work would not be in contravention of the immigration laws as
they would not be working in the United States, and that a former
permanent resident would be eligible for re-admission to the United
States as a special immigrant.
Response: The suggestion has not been adopted. State law is not
applicable. Under 5 U.S.C. 500(e), the Office is empowered to determine
who may practice before it with respect to patent matters. New Sec.
11.6(c) continues the practice followed under current 37 CFR 10.6(c).
Under Sec. 11.6(c), only aliens residing outside the United States
satisfying the requirements of that rule may be registered. Such aliens
must show that the patent office of the country where they reside and
are registered practitioners grants substantial reciprocity to
attorneys and agents admitted to practice before the USPTO in patent
cases. At this time, only the Canadian Patent Office is considered to
meet the requirements. Aliens in the United States, such as permanent
residents, meeting the requirements of Secs. 11.6(a) or 11.6(b)
can be registered while they remain in the United States. The
provisions of Sec. 11.9(b) continue the practice of granting limited
recognition to aliens in the United States not meeting the requirements
of Secs. 11.6(a) or 11.6(b), but who nevertheless show they are
authorized to prepare and prosecute patent applications; they may be
granted limited recognition under Sec. 11.9(b) to practice while they
remain in the United States. Upon departing the United States, their
authorization to practice ceases, and they can be registered only if the
provisions of Sec. 11.6(c) are satisfied.
Comment 77: One comment objected to the fifth sentence in Sec.
11.9(b)(2), which states "[a]ny person admitted to the United States
to be trained in patent law shall not be admitted to the registration
examination or granted recognition until completion of that training."
The comment suggested that non-immigrant persons be registered.
Response: The suggestion has been adopted in part. Section 11.9(b)
has been revised to provide limited recognition to a nonimmigrant alien
who resides in the United States and fulfills the provisions of
Secs. 11.7(a) and (b) if the nonimmigrant alien is authorized to
be employed or trained in the United States in the capacity of
representing a patent applicant by preparing or prosecuting a patent
application. The fifth sentence in proposed Sec. 11.9(b) has not been
adopted.
Comment 78: Three comments suggested it is unclear whether a
nonpractitioner assistant would be violating proposed Sec. 11.10(a) if
he or she assisted a registered practitioner, for example, in the
preparation of a patent application, even under the direction and
guidance of a registered practitioner. The question is raised in part,
because proposed Sec. 11.5(b) does not define "prosecution."
Response: This suggestion has not been adopted. Section 11.10(a)
adds nothing that was not already present in the current 37 CFR
10.10(a). No action has been taken regarding proposed Sec. 11.5(b). It
is the registered practitioner, as opposed to the non-practitioner, who
is responsible for compliance with Sec. 11.10(a). It is common
practice for nonpractitioner assistants to work under the direct
supervision of a registered practitioner in conducting many of the
activities associated with practice before the Office, and nothing in
Sec. 11.10(a) prohibits this activity so long as the registered
practitioner supervises and remains responsible for the assistant's
work.
Comment 79: One comment suggested that the subtitle of Sec.
11.10(b), "Undertaking for registration by former Office employees"
is not clear since the phrase "undertaking for registration" would
have no meaning to a person unfamiliar with OED practice.
Response: The suggestion has been adopted. The subtitle of Sec.
11.10(b) has been revised to read "Post employment agreement of former
Office employees."
Comment 80: One comment suggested that the first sentence of Sec.
11.10(b), addressing restrictions on registration for current
employees, be divided from the second and subsequent sentences, which
address restrictions on practice by former employees.
Response: The suggestion has been adopted in part. The first
sentence has been deleted. The first sentence prohibited registration
of current employees who had not been previously registered. However,
current employees who pass the registration examination are permitted
to be registered, but their names are endorsed on the register as
inactive. They are not permitted to practice in patent cases while they
remain employed by the Office.
Comment 81: One comment objected to Secs. 11.10(b)(1) and
11.10(b)(2) as intertwining rules of conduct with commentary.
Response: This suggestion has been adopted. The use of examples was
proposed to clarify the rules. However, the examples have been removed.
It is planned to expand the discussion of restrictions on former
examiners in the Manual of Patent Examining Procedure (MPEP).
Appropriate examples will be included in the MPEP.
Comment 82: Three comments suggested that Secs. 11.10(b)(1)
and (b)(2) be revised to change "United States" to "Office" to
remove ambiguity. One comment pointed out that all communications to
the Office are in some sense to the United States. One comment pointed
out that the "or's" in Sec. 11.10(b)(1) result in the rule
proscribing preparing someone's tax return or helping to write a letter
to their congressman. A fourth comment suggested that it is unnecessary
to reference United States or the Office inasmuch as the United States
would be a party with respect to the prosecution of a patent
application since the Office would be regarded as one party and that
the United States has a direct and substantial interest since it is
granting the monopoly for a patent or trademark.
Response: These comments have been accepted. Only representation
before the Office is within the scope of this part, and the relevant
provisions have been revised to more clearly reflect this.
Comment 83: One comment suggested that it is unnecessary to include
limitations in Sec. 11.10(b)(1) beyond that it can be construed merely
to require that former patent examiners cannot act as a representative
or intend to bring influence, including "conduct occurring behind the
scenes," for a period of two years in a "particular matter in which
he or she personally and substantially participated as an employee of
the Office."
Response: This suggestion has not been adopted. The substantive
restrictions are set forth in Secs. 11.10(b)(1) and 11.10(b)(2).
Section 11.10(b)(3) provides definitions for use in interpreting the
substantive provisions, but does not impose additional restrictions.
Comment 84: One comment suggested that Secs. 11.10(b)(1) and
11.10(b)(2), like 18 U.S.C. 207, not separate appearance and influence
portions of the statute into two separate and distinct prohibitions.
Response: These sections have been rewritten to remove the
references to communications with the intent to influence, which are
already included within the term "representation" as defined by Sec.
11.10(3)(i).
Comment 85: Three comments suggested that the items listed in
Secs. 11.10(b)(1)(i)-(iii) and 11.10(b)(2)(i)-(iii), should not be
in the alternative as proposed, but should be linked with "and" so as
to include all three conditions. Another comment suggested Secs.
11.10(b)(1) and 11.10(b)(2) appear to present grammar and syntax
problems that jam too many thoughts into a single sentence, and do not
work.
Response: The suggestion has been adopted. These provisions have
been rewritten for clarity.
Comment 86: One comment observed that unlike Secs. 11.10(b)(1)
and 11.10(b)(2), 18 U.S.C. 207 does not specify that appearance is
"formal and informal" or that communications are "oral or written,"
and that the sections be revised to conform with the statute.
Response: The suggestion has been adopted in part. Section 11.10(b)
does not implement or interpret 18 U.S.C. 207. The references to
appearances and communications have been removed from Secs.
11.10(b)(1) and 11.10(b)(2) as discussed in response to Comment 84.
Comment 87: One comment said the interchanging use in Sec.
11.10(b) of "individual," "any person" and "employee" is somewhat
confusing.
Response: The suggestion has not been adopted. The Office does not
believe that the use of these terms renders Sec. 11.10(b) ambiguous,
or that using different or fewer terms would increase its clarity.
Comment 88: One comment said 18 U.S.C. 207 provides for a one-year
restriction while Sec. 11.10(b)(2) provides for a two-year
restriction, and suggested that the period in the proposed rule be
commensurate with the statutory period.
Response: The suggestion has not been adopted. While Sec.
11.10(b)(2) does not implement 18 U.S.C. 207, its two-year restriction
parallels that of the statute.
Comment 89: One comment suggested that Sec. 11.11(a) be revised to
change "state bar" to "State bar" in the rules to conform to the
definition of "State" in Secs. 11.1 and 11.7(h)(4).
Response: The suggestion has been adopted. The lower case "s" in
"state" or "states" has been changed to an upper case "s"
wherever found in Sec. 11.11(a). Also, the designation of the first
paragraph of Sec. 11.11 as paragraph (a) has been deleted inasmuch as
proposed Secs. 11.11(b) through 11.11(f) remain under
consideration, and no paragraph following the first paragraph has been
adopted.
Comment 90: One comment suggested that the second sentence of Sec.
11.11(a) does not parse.
Response: The suggestion has been adopted. Although the language of
the sentence is the same as found in 37 CFR 10.11(a), the language has
been updated and revised.
Comment 91: One comment suggested that the Office should be able to
maintain at least three e-mail addresses for practitioners (e.g., home,
work, and "permanent" e-mail addresses), and send electronic
communication to all of these addresses to maximize the chance that a
message is actually received by the intended practitioner. The cost of
doing this is virtually nothing.
Response: The suggestion has been adopted in part. OED will
maintain a list of up to three e-mail addresses for a registered
practitioner and Sec. 11.11 has been revised to provide for up to
three e-mail addresses where the practitioner receives e-mail.
Practitioners will be responsible for updating OED with each and every
change of e-mail address. OED plans to use all the addresses furnished
by a practitioner to communicate with him or her.
Comment 92: One comment suggested that the following groups of
alien attorneys and agents should be exempt from the provisions of
proposed Secs. 11.6(a) and 11.6(b), respectively: (1) aliens who
have visas acceptable for practice before the Office under current Rule
10.6, whether or not they have yet entered the United States; and (2)
aliens in the midst of the visa application process for practice before
the Office acceptable under current Rule 10.6. Requiring aliens in
these groups to obtain new visas is unduly burdensome and impractical
if the visas are sufficient under the current rule.
Response: The suggestion has not been adopted. As discussed in
response to Comment 23, empowering nonimmigrant aliens to engage in
employment or training contrary to the immigration laws and their
reliance on registration to conduct themselves in that manner would be
inconsistent with the requirement that they possess good moral
character. Regulations prohibit some nonimmigrant aliens from engaging
in employment. See, e.g., 8 CFR 214.1(e). A nonimmigrant alien in the
United States may not engage in any employment unless the person has
been accorded a nonimmigrant classification which authorizes employment
or the person has been granted permission to engage in employment in
accordance with regulations found in Title 8 of the Code of Federal
Regulations. A nonimmigrant alien who is permitted to engage in
employment may engage only in such employment as has been authorized.
Any unauthorized employment by a nonimmigrant alien constitutes a
failure to maintain status. See, e.g., 8 CFR 214.1(e). The Bureau of
Citizenship and Immigration Services (BCIS) determines which
nonimmigrant alien is authorized to be employed while in the United
States, the capacity in which they are employed, and who may employ
them. The Office has no authority to license nonimmigrant aliens to
engage in employment, or to be employed by an employer beyond that
which the BCIS has sanctioned.
Comment 93: One comment suggested the phrase "such registration is
not inconsistent with the terms upon which the alien was admitted to,
and resides in, the United States," in Secs. 11.6(a) and 11.6(b),
be defined to enable practitioners and the general public to understand
what constitutes registration not inconsistent with the terms upon
which the alien was admitted to and is residing in the United States.
Response: The suggestion has not been adopted. The admission of
aliens to the United States and their authority to be employed is
dependent upon regulations promulgated by BCIS and its predecessor, the
Immigration and Naturalization Service. Those regulations change with
some frequency. It would not be prudent for the Office to adopt
definitions that would be rendered inconsistent with the regulations
adopted by the BCIS. Case law provides guidance in defining the meaning
of the phrase, which has been in use since 1985.
Comment 94: One comment suggested that the circumstances under
which an unregistered attorney may take testimony in an interference
should be elaborated upon either in Sec. 11.6(d) or in the commentary.
Response: The suggestion has not been adopted. Section 11.6(d)
permits the Chief Administrative Patent Judge or Vice Chief
Administrative Patent Judge of the Board of Patent Appeals and
Interferences to determine whether and the circumstances under which an
attorney who is not registered may take testimony for an interference
under 35 U.S.C. 24, or under 37 CFR 1.672. The circumstances and
necessity for setting forth circumstances can differ between
interferences. Accordingly, it is inappropriate to attempt to provide
in the rule or commentary an exhaustive listing of circumstances. The
Judges will exercise their discretion in determining the circumstances
under which the testimony will be taken.
Comment 95: One comment suggested that the registration procedure
sequence in Sec. 11.7 contains redundancy regarding scientific and
technical training in Secs. 11.7(b)(1) and 11.7(b)(3); that the
procedure contained in Sec. 11.7(b)(4) for retaking the examination
upon failure should be a separate provision; that the qualifications
considered are found in Sec. 11.7(b)(i) as well as Secs.
11.7(b)(2) to (b)(4) and (b)(6); that the requirement to keep an
application updated be separated from Sec. 11.7(b)(2); and it is
necessary to clarify why an individual reapplying more than one-year
after failing the registration examination must again submit
satisfactory proof of his or her scientific training.
Response: The suggestion for reorganizing the regulation is adopted
in part. The provisions in proposed Sec. 11.7(b)(3) have been merged
into Sec. 11.7(b)(1)(i)(C), and proposed Sec. 11.7(b)(5) has been
revised and renumbered Sec. 11.7(b)(3). Proposed Secs. 11.7(b)(4)
and 11.7(b)(6) has been moved into Sec. 11.7(b)(1) and renumbered
Secs. 11.7(b)(1)(ii) and 11.7(b)(1)(iii), respectively. The
reference to Sec. 11.7(b)(3) in Secs. 11.7(d)(1), 11.7(d)(2) and
11.7(d)(3) is revised to read as Sec. 11.7(b)(1)(i)(C). The procedure
for retaking the examination upon notice of failure has been moved to
Sec. 11.7(b)(1)(ii). It is believed to be preferable to consolidate in
one paragraph the provisions for passing the examination and for
retaking the examination upon failure. The qualification provisions in
Sec. 11.7(b)(1) are not repeated in renumbered Secs. 11.7(b)(2)
and 11.7(b)(3). The latter sections address two matters not covered in
Sec. 11.7(b)(1); the consequence of failing to file a complete
application, and the necessity for an individual, who does not reapply
until more than one year after the mailing date of the notice of
failure, to again comply with Sec. 11.7(b)(1).
Individuals reapplying more than one year after failing the
registration examination must again submit satisfactory proof of their
scientific training because their files will have been archived. The Office
does not have facilities for on-site long-term storage of files of
individuals who fail the examination. Ordering files from archived records
could subject applicants to unanticipated delays and does not promote
efficiency. While there are plans for scanning the files, resources are
limited at this time, and until scanning of all files is available, files
older than one year must be archived.
Comment 96: One comment suggested that all practitioners be treated
the same with respect to fitness, moral character, and legal competence
by: requiring all practitioners to have minimum technical and legal
experience if they are to practice before the USPTO; resolve the
allegedly inherent "unauthorized practice of law" by agents by
eliminating the agent status altogether, allowing agent status for
those only who complete the patent academy with four or more years'
experience; change the name "agent" to "non-legal agent" or other
name in order to protect the public and to put the public on notice
that they are not working with an attorney; notify agents that they
cannot practice law and further limit their scope of practice to
preparing and filing applications, not prosecution of patent
applications; and require a registered attorney to sign work done by an
agent, and/or require each agent to practice under the supervision of
registered attorney.
Response: The suggestion has not been adopted. A requirement for
minimum legal experience is subject to the same weakness discussed in
response to Comment 33. The Office is neither eliminating registration
of patent agents, nor requiring that they practice under the
supervision of registered attorneys. This rule making has not addressed
any change of status for patent agents. Patent agents serve a variety
of purposes, including helping make access to the patent system widely
available. The Office will continue to register individuals as patent
agents. Issues affecting unauthorized practice of law will be addressed
in the rules and commentary pertaining to Sec. 11.5(b). The period for
comment on the proposed rules for Sec. 11.5(b) has been extended until
June 11, 2004.
Comment 97: One comment suggested that to benefit from patent
harmonization, the registration examination given under Sec. 11.7
should place less emphasis on formalities and test each candidate's
ability to identify inventions, draft applications to global standards,
respond to substantive official actions from all major patent offices,
advise on the interpretation of patents and their validity, and advise
clients on the global patent positions arising in the commonly
encountered business situations.
Response: The suggestion has not been adopted. Under 35 U.S.C.
2(b)(2)(D), registration is for the recognition of agents and attorneys
representing applicants or other parties before the Office.
Accordingly, the examination is properly confined to aspects of
drafting applications to be filed in the Office as well as applications
filed under the Patent Cooperation Treaty, and responding to
substantive official actions from the Office. A practitioner advising
clients on their global patent positions arising in the commonly
encountered business situations should have the legal knowledge, skill,
thoroughness and preparation reasonably necessary to provide the
advice. Practitioners without the background should either prepare
adequately to provide competent advice or refer the client to other
practitioners prepared to provide the advice.
Comment 98: One comment referred to the comments on page 69448 of
the Notice which indicated that the registration examination will be
"open book" in the sense that the MPEP would be accessible on-line in
the computerized examination. The comment suggested that individuals be
permitted to utilize a paper copy of the MPEP because prohibiting paper
resource material will, to some extent, adversely impact some
individuals.
Response: The suggestion has not been adopted. Prior to taking an
examination, a tutorial will be provided by the commercial entity to
all individuals to show them how to operate the computer, download and
search the MPEP, and navigate among the questions. Further, we are in
the process of developing a tutorial that will be available either on
or through a link from the Office Web site to show how the MPEP will be
accessed and navigated during the examination. Use of a computer on
this examination, as on tests for driver's licenses, is readily
learned.
Comment 99: One comment inquired why candidates are no longer
allowed to bring in their notes and/or reference books to the exam, and
suggested that they be able to bring notes used in preparing for the
exam, an indexed notebook on patent law material, and a hard copy of
the MPEP that has been tabbed to the candidate's liking.
Response: The suggestion has not been adopted inasmuch as the rules
do not contain a provision addressing the issue. The answer to each
examination question is located in the MPEP. The MPEP will be available
on the computer and will download quickly. Thus, the source of all
correct answers will be made available to all candidates. Additional
materials are unnecessary.
Rule Making Considerations
Regulatory Flexibility Act
The Regulatory Flexibility Act, 5 U.S.C. 601 et seq, requires
agencies to consider the economic impact of regulatory actions on small
entities when finalizing a rule making. If the rule is expected to have
a significant economic impact on a substantial number of small
entities, the agency must prepare a final regulatory flexibility
analysis (FRFA). However, section 605(b) of the Regulatory Flexibility
Act allows the head of an agency to prepare a certification statement
in lieu of a FRFA if the rule making is not expected to have a
significant economic impact on a substantial number of small entities.
The Deputy General Counsel for General Law*1 of the USPTO hereby
certifies to the Chief Counsel for Advocacy, Small Business
Administration, that this final rule will not have a significant
economic impact on a substantial number of small entities. The factual
basis for the certification is as follows:
Factual Basis for Certification
The primary purpose of the rule package is to codify enrollment
procedures implementing computerized delivery of the registration
examination and to provide procedures for processing registration
applications that are more efficient and flexible for the Office and
applicants. At the outset, it should be noted that the only persons
affected by the fee increases set forth in this rule package are those
individuals seeking enrollment to become registered patent
practitioners or those individuals seeking registration or
reinstatement after certain events led to their disbarment or
suspension on ethical grounds, denial of registration on grounds of lack
of good moral character and reputation, or conviction of a felony or crime
involving moral turpitude or breach of fiduciary duty.
Both attorneys and non-attorneys can take the registration
examination. Inasmuch as the income of attorneys and non-attorneys
differs, the discussion contained in this Regulatory Flexibility Act
certification considers the respective average incomes of both types of
potential applicants. USPTO statistics indicate that over the course of
the last four examinations (during 2002 and 2003), on average
approximately 19% of applicants are licensed attorneys at the time they
seek registration to take the enrollment examination. For April 2002,
October 2002, April 2003, and October 2003, the number of applicants
indicating they were attorneys was 26%, 16%, 17% and 16%, respectively.
Conversely, the USPTO estimates that approximately 81% of applicants
are not licensed attorneys at the time they seek registration to take
the enrollment examination.
The Office does not require applicants to identify their
affiliation with a particular type of employer (law firm, business,
solo practitioner, etc.) at the time of application. Furthermore, the
Office does not require applicants to categorize their employer as a
large or small entity. In a customer satisfaction survey answered by
1,651 patent attorneys in 2002, the Office collected data indicating
that approximately 63.5% of patent attorneys are affiliated with a law
firm. The Office believes that the affiliation of attorney-applicants
does not dramatically differ from the affiliation of patent attorneys
who responded to the survey. Thus, estimates for attorney income are
based on the compensation attorneys receive in law firms.
Only individuals, not legal entities, may take the registration
examination. This is true even if the individual is a lawyer having a
solo practice. The fees associated with the application and examination
may be paid by the individual applicant or by his or her employer.
Employers, some of which may qualify as small entities, are not
required to pay the fees. Whether the individual or the business (small
or large) bears the cost of the fees is at the option of the individual
and the employer. Inasmuch as the rules do not require the business
(large or small) to bear the cost of the fees, the Small Business
Administration's size standards for offices of lawyers are not
applicable. Thus, the Office has considered, but rejected, measuring
the impact of this rule package on law firms that may qualify as small
entities.
Computerized Examination Fee
Section 1.21(a)(1)(ii)(A) establishes a $200 registration
examination fee for test administration by a commercial entity.
Individuals wishing to take the computerized examination administered
by a commercial entity will pay the entity an additional fee of $150.
The combined cost of $350 ($200 + $150) is only $40 more than the $310
fee previously charged by the Office. The $40 increase provides
applicants with additional conveniences, such as the ability to take
the examination in one of over 400 locations throughout the country,
thereby reducing travel and associated expenses. The examination is
expected to be offered by the commercial entity five days a week,
excluding holidays. Consequently, applicants will have more
opportunities to take the examination, rather than waiting for the
Office to administer the examination only twice per year.
Substantial Number of Persons Affected
Of approximately 5,897 applications filed in Fiscal Year 2003 for
recognition to practice before the USPTO in patent cases, approximately
5,338 individuals were admitted to take the examination. Based upon the
admission rate (approximately 90%), the USPTO estimates that
approximately the same number of individuals will be affected by the
change to Sec. 1.21.
Not a Significant Economic Impact
The $40 increase in fees to take the registration examination is
insignificant. The previously charged $310 fee has not been increased
since 1997. In comparison to examination fees charged by various state
bars, the $350 total fee is quite low. See, e.g., Comprehensive Guide
to Bar Admissions 2004, Chart XI, Bar Admissions Fees (National
Conference of Bar Examiners and American Bar Association Section of
Legal Education and Admissions to the Bar), also available on the
Internet at www.ncbex.org/pub.htm. All state bars examination fees. For
non-attorneys, the state bar examination fee ranges from $100 to $1,450,
and for attorneys, the fee ranges from $100 to $2,500. The USPTO
examination fee is less than or equal to the fee charged by 34 states for
non-attorneys, and less than or equal to the fee charged by 33 states for
attorneys.
As previously noted, the Office estimates that approximately 19% of
applicants seeking enrollment are attorneys licensed to practice in a
U.S. jurisdiction. Of this 19% of applicants, approximately 63.5% of
these attorneys work in law firms. The average total compensation of
attorneys in a law firm ranges from $102,841 to $299,391, depending on
whether the attorney is of-counsel, a staff attorney, an associate
attorney, a non-equity partner or an equity partner/shareholder. See,
e.g., The 2003 Survey of Law Firm Economics, "National Individual Status
Codes Total Compensation," p. 169. The relevant "Total Compensation" chart
is also available at www.altmanweil.com/pdf/2003SLFESample.pdf. Thus, the
$40 increase in total fees to take the registration examination is
insignificant to attorneys, in comparison with their average annual income.
For those applicants who are not licensed attorneys at the time
they register to take the examination, it is noted that the average
income for males in the United States is about $58,000. For females in
the United States, the average income is $41,000. See "Income In The
United States: 2002 Current Population Reports Consumer Income" issued
by the U.S. Census Bureau, page 9, www.census.gov/prod/2003pubs/p60-
221.pdf. It is equally likely that an applicant for registration is a
male or female. Accordingly, it is assumed that the average income of
an applicant is $49,500, the average of the incomes of males and
females in the United States. In comparison to the average income of a
citizen of the United States, the $40 increase in total fees to take
the computerized examination is not significant.
In addition, the Office is giving applicants the option of taking
the examination by computer or by paper (discussed below). Applicants
may choose the lower priced option of taking the computerized
examination, rather than choosing to take the higher priced paper
examination. There is no substantive difference between the
computerized and paper versions of the examination. Applicants who take
the computerized examination will not be required to purchase computers,
software or computer programs.
Paper Examination Fee
Section 1.21(a)(1)(ii)(B) establishes a $450 registration
examination fee for test administration by the Office. For the past
several decades, the Office of Personnel Management administered a
paper examination for the Office, which cost applicants $310. The
Office must charge the $450 fee in order to recoup the higher costs of
administering the paper examination. The examination provided for under
Section 1.21(a)(i)(ii)(B) will be given on paper only once per year at
or relatively near the USPTO headquarters office in Alexandria, Virginia.
Not a Substantial Number of Small Entities
The Office does not believe that a substantial number of applicants
will request the Office to deliver the paper examination to them
because the administration and grading of such a paper examination will
cost more and will take more time to process. Release of results will
take much longer than in the case of the electronic examination. As a
result, applicants who choose the paper examination will not be
eligible for registration as quickly as those passing the computerized
examination.
Based on the 5,897 applications received in Fiscal Year 2003, the
Office estimates that the change to Sec. 1.21 would impact few (about
2%) registration applicants. It is estimated that approximately 130
individuals will request that the Office administer a paper examination
to them and grade it annually. The Office estimates that approximately
one half of DC metro area applicants may wish to take the paper
examination.
In Fiscal Year 2003, the number of local applicants taking the
examination in each of two administrations was 235 and 238,
respectively. In Fiscal Year 2002, the number of local applicants
taking the examination in each of two administrations was 285 and 252,
respectively. In Fiscal Year 2001, the number of local applicants
taking the examination in each of two administrations was 270 and 285,
respectively. Assuming that one half of the applicants would want to
take the paper examination, the Office estimates approximately 130
applicants will desire to take the paper examination provided for under
this final rule section. As such, the rule does not affect a
substantial number of individuals.
Not a Significant Economic Impact
The $450 fee is an increase of only $140 over the fee previously
charged to take the examination.
As previously stated, approximately 19% of applicants are
attorneys, and approximately 63.5% of those attorneys earn an average
annual income ranging from $102,841 to $299,391. Approximately 81% of
applicants are non-attorneys, with an average annual income of $49,500.
This fee increase will not have a significant economic impact on
attorneys or non-attorneys.
In addition, the paper examination is provided as an alternative to
the computerized examination. In this way, the USPTO affords applicants
a voluntary, additional option for those who desire to take the
examination on paper. Applicants are not required, under this rule
making or any other statute or regulation, to take the paper
examination. Taking the more expensive paper examination is solely at
the discretion of the applicant.
In fact, the commercial entity providing the computerized
examination will be able to accommodate those applicants who require a
reasonable accommodation. Thus, there is no reason that an applicant
would be required to take the paper examination administered by the
Office, which costs more than the computerized examination given by a
commercial entity.
Petition Fee
Section 1.21(a)(5)(i) establishes a fee of $130 for petitions to
the Director of the Office of Enrollment and Discipline.
Not a Substantial Number of Small Entities
The Office initially estimated that there would be approximately 69
petitions impacted by this fee. In Fiscal Years 2002 and 2003, there
were, respectively, 67 and 57 petitions to the Director of Enrollment
and Discipline filed by registration applicants. The Office is revising
its estimate to be 62 petitions, the average of the number of the
petitions filed in Fiscal Years 2002 and 2003. Based on 5,897
applications received in Fiscal Year 2003, the Office estimates that
the change to Sec. 1.21 would impact few (about 0.1%) of registration
applicants. As such, the rule does not affect a substantial number of
individuals.
Not a Significant Economic Impact
Adoption of the $130 fee will not have a significant economic
impact on a substantial number of small entities. The average total
compensation of lawyers in a law firm ranges from $102,841 to $299,391.
The average annual income of an individual applicant (non-attorney) is
$49,500.
Application/Reinstatement Fee
Section 1.21(a)(10) imposes a $1600 fee on application by
applicants for recognition or registration after disbarment or
suspension on ethical grounds, or resignation pending disciplinary
proceedings in any other jurisdiction; on application by a person for
recognition or registration who is asserting rehabilitation from prior
conduct that resulted in an adverse decision in the Office regarding
the person's moral character; on application by a person for
recognition or registration after being convicted of a felony or crime
involving moral turpitude or breach of fiduciary duty; and on petition
for reinstatement by a person excluded or suspended on ethical grounds,
or excluded on consent from practice before the Office.
Not a Substantial Number of Small Entities
The Office initially estimated that there would be approximately
two such applications filed annually. In Fiscal Year 2003, one
application for registration and three petitions for reinstatement were
filed with the Director of Enrollment and Discipline for applicants
that would fall within the scope of this rule. In view of the figures
for Fiscal Year 2003, the Office is revising its estimate to four
applications filed annually that would be affected by the provision in
Sec. 1.21(a)(10). Based on the 5,897 applications received in Fiscal
Year 2003, the Office estimates that the change to Sec. 1.21 would
impact very few (0.06%) applicants. As such, the rule does not affect a
substantial number of individuals.
Not a Significant Economic Impact
The $1,600 fee is an increase of $1,560 over the $40 application
fee the affected individuals paid under the previous rule, 37 CFR
1.21(a)(1)(i). This fee increase is necessary in order for the Office
to cover a portion of the expenses associated with investigating and
resolving these types of petitions, based on average hours spent by the
OED Director, staff attorneys, paralegals, and clericals.
The adoption of the $1,600 fee will not have a significant economic
impact on a substantial number of small entities. For any given fiscal
year, the persons who will be required to pay this fee will be
attorneys an estimated 75% of the time. Thus, in a majority of the
situations where a practitioner must pay this fee, the average total
compensation of attorneys in a law firm ranges from $102,841 to
$299,391. In the remaining situations, the average income of the person
who will be required to pay this fee is approximately $49,500. The
$1540 increase does not have a significant economic impact on either
attorneys or non-attorneys.
Regulatory Flexibility Act Comments and Responses
The Office received five comments, three from individuals and two
from an intellectual property law organization, regarding the impact of
these rules upon small entities. With regard to comments about rules
promulgated in this final rule making, the comments are summarized and
addressed below.
Comment: One comment suggested that the Office is proposing "to
registration institute [sic] fees based on assumptions of how much
people make." The comment further states, "I am always disturbed that
these fee schedules consider only full time and inactive attorneys.
There is no consideration given for part time attorneys."
Response: Inasmuch as the comment references "institut[ing]"
fees, the comment is construed as referring to the annual fees (not
previously charged) that were included in the notice of proposed rule
making. The instant rules change only the fees associated with becoming
registered to practice. Accordingly, changing the fees to become
registered would not involve "institut[ing]" fees for full time, part
time, or inactive attorneys who are already registered to practice. The
fees considered in the instant final rules do not address the annual
fees. Thus, the Office will address the impact of annual fees upon part
time attorneys when the final rule adopting annual fees is promulgated.
Comment: One comment suggested improvements in licensing (including
preceptorship) in order to assist small businesses and inventors who
are not able to judge the qualifications of registered practitioners.
The comment opines that the proposed rules allow incompetent
practitioners to prey on small businesses and individuals and will
increase the cost of obtaining meaningful patent protection for small
businesses because of the loss of rights due to drafting inadequate
specifications and claims.
Response: The registration requirements set forth in this rule
package operate to protect small entities, independent inventors and
large entities alike. These rules allow for a practitioner to provide
legal services after certain registration requirements are met. Small
entities may confidently rely upon the Office's registration of
practitioners to the same extent that larger entities do. Thus, the
rules do not increase the cost of obtaining meaningful patent
protection for either small or large businesses.
The registration rules ensure that all recognized practitioners
meet the same scientific and technical competency requirements to
practice before the USPTO. Of the 5,897 applicants for registration in
Fiscal Year 2003, approximately 5,338 were admitted to the registration
examination. About another 120 applicants are registered to practice
pursuant to the last sentence of 37 CFR 10.7(b) or reciprocally
registered as foreign patent agents pursuant to 37 CFR 10.6(c). All
registration requirements are substantially uniform. All applicants
have met the scientific and training qualifications found in the
regulations. Accordingly, all individuals registered to practice before
the Office are believed to possess the requisite level of competence.
The Office does not require preceptorships (a period of training).
As discussed in response to Comment 33, supra, Commissioner Robertson,
in a 1933 report, termed the registration system upon submission of
affidavits of attorneys as neither reliable nor satisfactory.
Commissioner Robertson regarded the applicant's showing of "several
examples of his ability to prosecute a patent application" as
"perfunctory" and "certainly not sufficient." Additionally, the
Commissioner cited the required affidavit as being "subject to the
great weakness of friendship between attorneys and the applicant," and
that an "established attorney hesitates to refuse to make an affidavit
as to competency of one of his employees who is ambitious and is
striving to climb the ladder of success." The practice was ended in
1934. The suggested preceptorship, being subject to the same weaknesses
as the affidavit practice rejected by Commissioner Robertson, is not
satisfactory for the same reasons.
Comment: One comment said the proposed rules governing recognition
of individuals to practice should be carefully considered with regard
to adverse consequences on smaller businesses. The comment also
suggested that the proposed rules were not well thought-out concerning
whether they make access to the USPTO more difficult and costly for
small businesses. The comment also alleges that the proposed rules
unnecessarily disrupt the prosecution of a significant number of patent
applications currently before the USPTO.
Response: The rules adopted in this rule making package do not make
access to the Office more difficult or costly for small entities. The
rules do not affect the Office fees for patent or trademark
applications. In fact, qualifying small entities pay reduced fees to
obtain patents under the current fee structure.
The fees in this final rule package affect only individuals seeking
registration as attorneys or agents. Only individuals, not businesses
or other legal entities, may be registered to practice before the
Office in patent cases. To the extent that an individual may qualify as
a small entity, the economic impact of the fee increases in this rule
package is not significant. For example, as discussed in detail above,
for the vast majority of individuals seeking registration, the increase
in the fee associated with admission to the examination is only $40.
The increase in fees simply does not have a significant economic impact
on individuals who may qualify as small entities.
Comment: Two letters from an intellectual property law organization
complained, in general, about whether the USPTO has complied with the
requirements of the Regulatory Flexibility Act in certifying that the
notice of proposed rule making will not have a significant economic
impact on a substantial number of small entities.
Response: As noted above, the USPTO has complied with all
requirements of the Regulatory Flexibility Act by certifying that this
rule making will not have a significant economic impact on a
substantial number of small entities. The Office certified, in the
Notice of Proposed Rule Making, that an initial Regulatory Flexibility
Act analysis was not required because the notice of proposed rule
making did not have a significant economic impact on a substantial
number of small entities. See 68 F.R. 69442, 69510-69511 (Dec. 12,
2003). With respect to this final rule making, for a more detailed
explanation of the certification, please see the Factual Basis set
forth in this section, above.
None of these comments change the USPTO's assessment that the
preparation of a Regulatory Flexibility Act analysis is not required.
This rule making will not have a significant economic impact on a
substantial number of small entities.
Executive Order 13132: This notice of rule making does not contain
policies with federalism implications sufficient to warrant preparation
of a Federalism Assessment under Executive Order 13132 (August 4,
1999).
Executive Order 12866: This notice of rule making has been
determined to be not significant for purposes of Executive Order 12866
(September 30, 1993).
Paperwork Reduction Act: This notice of rule making 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.). This rule introduces new information
requirements and fees into collection 0651-0012. Additional information
collection activities involved in this notice of rule making are
covered under OMB control number 0651-0017.
The title, description, and respondent description of the currently
approved information collection 0651-0012 are
shown below with an estimate of the annual reporting burdens.
Included in this estimate is the time for reviewing instructions,
gathering and maintaining the data needed, and completing and reviewing
the collection of information. The principal impact of the changes in
this notice of rule making is to applicants seeking registration as
patent attorneys and agents.
OMB Number: 0651-0012.
Title: Admittance to Practice and Roster of Registered Patent
Attorneys and Agents Admitted to Practice Before the United States
Patent and Trademark Office (USPTO).
Form Numbers: PTO-158, PTO158A, PTO-275, PTO-107A, PTO-1209.
Affected Public: Individuals or households, business or other for-
profit, Federal Government, and State, local or tribal governments.
Estimated Number of Respondents: 24,024.
Estimated Time Per Response: The USPTO estimates that it takes the
public 30 minutes to complete either an application for registration to
practice before the USPTO, or an application for a foreign resident to
practice before the USPTO and, depending upon the complexity of the
situation, to gather, prepare and submit the application. It is
estimated to take 20 minutes to complete undertakings under 37 CFR
10.10(b); 10 minutes to complete data sheets; 5 minutes to complete the
oath or affirmation; 45 minutes to complete the petition for waiver of
regulations; and 90 minutes to complete the written request for
reconsideration of disapproval notice of application and the petition
for reinstatement to practice. These times include time to gather the
necessary information, prepare and submit the forms and requirements in
this collection.
Estimated Total Annual Burden Hours: 6,078.
Needs and Uses: The public uses the forms in this collection to
apply for the examination for registration, to ensure that all of the
necessary information is provided to the USPTO and to request inclusion
on the Register of Patent Attorneys and Agents.
Comments have been invited on: (1) Whether the collection of
information is necessary for proper performance of the functions of the
agency; (2) the accuracy of the agency's estimate of the burden; (3)
ways to enhance the quality, utility, and clarity of the information to
be collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons were requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Harry I. Moatz, Director of Enrollment and Discipline,
United States Patent and Trademark Office, P.O. Box 1450, Alexandria,
Virginia 22313-1450, or to the Office of Information and Regulatory
Affairs of OMB, New Executive Office Building, 725 17th Street, NW.,
Room 10235, Washington, DC 20503, Attention: Desk Officer for the
United States Patent and Trademark Office.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
37 CFR Part 10
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
37 CFR Part 11
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
For the reasons set forth in the preamble, the United States Patent and
Trademark Office is amending 37 CFR parts 1, 10, and 11 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 1.1 is amended by revising paragraph (a) introductory text
and by adding paragraph (a)(5) to read as follows:
Sec. 1.1 Addresses for non-trademark correspondence with the United
States Patent and Trademark Office.
(a) In general. Except as provided in paragraphs (a)(3)(i),
(a)(3)(ii), and (d)(1) of this section, all correspondence intended for
the United States Patent and Trademark Office must be addressed to
either "Director of the United States Patent and Trademark Office,
P.O. Box 1450, Alexandria, Virginia 22313-1450" or to specific areas
within the Office as set out in paragraphs (a)(1), and (a)(3)(iii) of
this section. When appropriate, correspondence should also be marked
for the attention of a particular office or individual.
* * * * *
(5) Office of Enrollment and Discipline correspondence. All
correspondence directed to the Office of Enrollment and Discipline
concerning enrollment, registration, and investigation matters should
be addressed to Mail Stop OED, Director of the United States Patent and
Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
* * * * * *
3. Section 1.21 is amended by revising paragraph (a) to read as
follows:
Sec. 1.21 Miscellaneous fees and charges.
* * * * *
(a) Registration of attorneys and agents:
(1) For admission to examination for registration to practice:
(i) Application Fee (non-refundable) - $40.00
(ii) Registration examination fee
(A) For test administration by commercial entity - $200.00
(B) For test administration by the USPTO - $450.00
(2) On registration to practice or grant of limited recognition
under Sec. 11.9(b) or (c) - $100.00
(3) For reinstatement to practice - $40.00
(4) For certificate of good standing as an attorney or agent -
$10.00
(i) Suitable for framing - $20.00
(ii) [Reserved]
(5) For review of decision:
(i) By the Director of Enrollment and Discipline under Sec.
11.2(c) - $130.00
(ii) Of the Director of Enrollment and Discipline under Sec.
11.2(d) - $130.00
(6)-(9) [Reserved]
(10) On application by a person for recognition or registration
after disbarment or suspension on ethical grounds, or resignation
pending disciplinary proceedings in any other jurisdiction; on
application by a person for recognition or registration who is
asserting rehabilitation from prior conduct that resulted in an adverse
decision in the Office regarding the person's moral character; and on
application by a person for recognition or registration after being
convicted of a felony or crime involving moral turpitude or breach of
fiduciary duty; on petition for reinstatement by a person excluded or
suspended on ethical grounds, or excluded on consent from practice before
the Office. - $1,600.00
* * * * *
4. Section 1.31 is revised to read as follows:
Sec. 1.31 Applicants may be represented by a registered attorney or
agent.
An applicant for patent may file and prosecute his or her own case,
or he or she may be represented by a registered attorney, registered
agent, or other individual authorized to practice before the United
States Patent and Trademark Office in patent matters. See Secs.
11.6 and 11.9 of this subchapter. The United States Patent and
Trademark Office cannot aid in the selection of a registered attorney
or agent.
5. Section 1.33, paragraph (c), is revised to read as follows:
Sec. 1.33 Correspondence respecting patent applications,
reexamination proceedings, and other proceedings.
* * * * *
(c) All notices, official letters, and other communications for the
patent owner or owners in a reexamination proceeding will be directed
to the attorney or agent of record (See Sec. 1.34(b)) in the patent
file at the address listed on the register of patent attorneys and
agents maintained pursuant to Secs. 11.5 and 11.11 of this
subchapter or, if no attorney or agent is of record, to the patent
owner or owners at the address or addresses of record.
* * * * *
6. Section 1.455 is amended by revising the first sentence of paragraph
(a) to read as follows:
Sec. 1.455 Representation in international applications.
(a) Applicants of international applications may be represented by
attorneys or agents registered to practice before the United States
Patent and Trademark Office or by an applicant appointed as a common
representative (PCT Art. 49, Rules 4.8 and 90 and Sec. 11.9). * * *
* * * * *
PART 10 - REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK OFFICE
7. The authority citation for 37 CFR Part 10 continues to read as
follows:
Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 2, 6, 32, 41.
Sec. 10.2 [Removed]
8. Section 10.2 is removed and reserved.
Sec. 10.3 [Removed]
9. Section 10.3 is removed and reserved.
Sec. 10.5 [Removed]
10. Section 10.5 is removed and reserved.
Sec. 10.6 [Removed]
11. Section 10.6 is removed and reserved.
Sec. 10.7 [Removed]
12. Section 10.7 is removed and reserved.
Sec. 10.8 [Removed]
13. Section 10.8 is removed and reserved.
Sec. 10.9 [Removed]
14. Section 10.9 is removed and reserved.
Sec. 10.10 [Removed]
15. Section 10.10 is removed and reserved.
16. Section 10.11 is revised to read as follows:
Sec. 10.11 Removing names from the register.
A letter may be addressed to any individual on the register, at the
address of which separate notice was last received by the Director, for
the purpose of ascertaining whether such individual desires to remain
on the register. The name of any individual failing to reply and give
any information requested by the Director within a time limit specified
will be removed from the register and the names of individuals so
removed will be published in the Official Gazette. The name of any
individual so removed may be reinstated on the register as may be
appropriate and upon payment of the fee set forth in Sec. 1.21(a)(3)
of this subchapter.
17. Part 11 is added as follows:
PART 11 - REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT
AND TRADEMARK OFFICE
Subpart A - General Provisions
General Information
Sec.
11.1 Definitions.
11.2 Director of the Office of Enrollment and Discipline.
11.3 Suspension of rules.
Subpart B - Recognition To Practice Before the USPTO
Patents, Trademarks, and Other Non-Patent Law
11.4 [Reserved]
11.5 Register of attorneys and agents in patent matters.
11.6 Registration of attorneys and agents.
11.7 Requirements for registration.
11.8 Oath and registration fee.
11.9 Limited recognition in patent matters.
11.10 Restrictions on practice in patent matters.
11.11 Notification.
Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2)(D),
32.
Subpart A - General Provisions
General Information
Sec. 11.1 Definitions.
This part governs solely the practice of patent, trademark, and
other law before the United States Patent and Trademark Office. Nothing
in this part shall be construed to preempt the authority of each State
to regulate the practice of law, except to the extent necessary for the
United States Patent and Trademark Office to accomplish its Federal
objectives. Unless otherwise clear from the context, the following
definitions apply to this part:
Attorney or lawyer means an individual who is a member in good
standing of the highest court of any State, including an individual who
is in good standing of the highest court of one State and 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. A non-
lawyer means a person or entity who is not an attorney or lawyer.
Belief or believes means that the person involved actually supposed
the fact in question to be true. A person's belief may be inferred from
circumstances.
Conviction or convicted means any confession to a crime; a verdict
or judgment finding a person guilty of a crime; any entered plea,
including nolo contendre or Alford plea, to a crime; or receipt of
deferred adjudication (whether judgment or sentence has been entered or
not) for an accused or pled crime.
Crime means any offense declared to be a felony or misdemeanor by
Federal or State law in the jurisdiction where the act occurs.
Data sheet means a form used to collect the name, address, and
telephone information from individuals recognized to practice before
the Office in patent matters.
Fiscal year means the time period from October 1st through the
ensuing September 30th.
Fraud or fraudulent means conduct having a purpose to deceive and
not merely negligent misrepresentation or
failure to apprise another of relevant information.
Good moral character and reputation means the possession of honesty
and truthfulness, trustworthiness and reliability, and a professional
commitment to the legal process and the administration of justice, as
well as the condition of being regarded as possessing such qualities.
Knowingly, known, or knows means actual knowledge of the fact in
question. A person's knowledge may be inferred from circumstances.
Matter means any litigation, administrative proceeding, lobbying
activity, application, claim, investigation, controversy, arrest,
charge, accusation, contract, negotiation, estate or family relations
practice issue, request for a ruling or other determination, or any
other matter covered by the conflict of interest rules of the
appropriate Government entity.
OED means the Office of Enrollment and Discipline.
OED Director means the Director of the Office of Enrollment and
Discipline.
OED Director's representatives means attorneys within the USPTO
Office of General Counsel who act as representatives of the OED
Director.
Office means the United States Patent and Trademark Office.
Practitioner means:
(1) An attorney or agent registered to practice before the Office
in patent matters,
(2) An individual authorized under 5 U.S.C. 500(b) or otherwise as
provided by Sec. 10.14(b), (c), and (e) of this subchapter, to
practice before the Office in trademark matters or other non-patent
matters, or
(3) An individual authorized to practice before the Office in a
patent case or matters under Sec. 11.9(a) or (b).
Proceeding before the Office means an application for patent, an
application for reissue, a reexamination, a protest, a public use
matter, an inter partes patent matter, correction of a patent,
correction of inventorship, an application to register a trademark, an
inter partes trademark matter, an appeal, a petition, and any other
matter that is pending before the Office.
Reasonable or reasonably when used in relation to conduct by a
practitioner means the conduct of a reasonably prudent and competent
practitioner.
Registration means registration to practice before the Office in
patent proceedings.
Roster means a list of individuals who have been registered as
either a patent attorney or patent agent.
Significant evidence of rehabilitation means satisfactory evidence
that is significantly more probable than not that there will be no
recurrence in the foreseeable future of the practitioner's prior
disability or addiction.
State means any of the 50 states of the United States of America,
the District of Columbia, and other territories and possessions of the
United States of America.
Substantial when used in reference to degree or extent means a
material matter of clear and weighty importance.
Suspend or suspension means a temporary debarring from practice
before the Office or other jurisdiction.
United States means the United States of America, and the
territories and possessions the United States of America.
USPTO Director means the Director of the United States Patent and
Trademark Office, or an employee of the Office delegated authority to
act for the Director of the United States Patent and Trademark Office
in matters arising under this part.
Sec. 11.2 Director of the Office of Enrollment and Discipline.
(a) Appointment. The USPTO Director shall appoint a Director of the
Office of Enrollment and Discipline (OED Director). In the event of the
absence of the OED Director or a vacancy in the office of the OED
Director, or in the event that the OED Director recuses himself or
herself from a case, the USPTO Director may designate an employee of
the Office to serve as acting OED Director. The OED Director and any
acting OED Director shall be an active member in good standing of the
bar of a State.
(b) Duties. The OED Director shall:
(1) Supervise staff as may be necessary for the performance of the
OED Director's duties.
(2) Receive and act upon applications for registration, prepare and
grade the examination provided for in Sec. 11.7(b), maintain the
register provided for in Sec. 11.5, and perform such other duties in
connection with enrollment and recognition of attorneys and agents as
may be necessary.
(3) Conduct investigations into the moral character and reputation
of any individual seeking to be registered as an attorney or agent, or
of any individual seeking limited recognition, deny registration or
recognition of individuals failing to demonstrate possession of good
moral character and reputation, and perform such other duties in
connection with enrollment matters and investigations as may be
necessary.
(4) The Director shall conduct investigations into possible
violations by practitioners of Disciplinary Rules, with the consent of
the Committee on Discipline initiate disciplinary proceedings under
Sec. 10.132(b) of this subchapter, and perform such other duties in
connection with investigations and disciplinary proceedings as may be
necessary.
(5)-(7) [Reserved]
(c) Petition to OED Director. Any petition from any action or
requirement of the staff of OED reporting to the OED Director shall be
taken to the OED Director. Any such petition not filed within sixty
days from the mailing date of the action or notice from which relief is
requested will be dismissed as untimely. The filing of a petition will
not stay the period for taking other action which may be running, or
stay other proceedings. A final decision by the OED Director may be
reviewed in accordance with the provisions of paragraph (d) of this
section.
(d) Review of OED Director's decision. An individual dissatisfied
with a final decision of the OED Director, except for a decision
dismissing a complaint or closing an investigation, may seek review of
the decision upon petition to the USPTO Director accompanied by payment
of the fee set forth in Sec. 1.21(a)(5)(ii) of this subchapter. A
decision dismissing a complaint or closing an investigation is not
subject to review by petition. Any petition not filed within sixty days
from the mailing date of the final decision of the OED Director will be
dismissed as untimely. Any petition shall be limited to the facts of
record. Briefs or memoranda, if any, in support of the petition shall
accompany or be embodied therein. The USPTO Director in deciding the
petition will consider no new evidence. Copies of documents already of
record before the OED Director need not be submitted with the petition.
No oral hearing on the petition will be held except when considered
necessary by the USPTO Director. Any request for reconsideration of the
decision of the USPTO Director will be dismissed as untimely if not
filed within thirty days after the mailing date of said decision. If
any request for reconsideration is filed, the decision on
reconsideration shall be the final agency action.
Sec. 11.3 Suspension of rules.
In an extraordinary situation, when justice requires, any
requirement of the regulations of this part which is not a requirement
of statute may be suspended or waived by the USPTO Director or the
designee of the USPTO Director, sua sponte or on petition of any party,
including the OED Director or the OED Director's representative,
subject to such other requirements as may be imposed.
Subpart B - Recognition To Practice Before the USPTO
Patents, Trademarks, and Other Non-Patent Law
Sec. 11.4 [Reserved]
Sec. 11.5 Register of attorneys and agents in patent matters.
A register of attorneys and agents is kept in the Office on which
are entered the names of all individuals recognized as entitled to
represent applicants having prospective or immediate business before
the Office in the preparation and prosecution of patent applications.
Registration in the Office under the provisions of this part shall
entitle the individuals so registered to practice before the Office
only in patent matters.
Sec. 11.6 Registration of attorneys and agents.
(a) Attorneys. Any citizen of the United States who is an attorney
and who fulfills the requirements of this part may be registered as a
patent attorney to practice before the Office. When appropriate, any
alien who is an attorney, who lawfully resides in the United States,
and who fulfills the requirements of this part may be registered as a
patent attorney to practice before the Office, provided that such
registration is not inconsistent with the terms upon which the alien
was admitted to, and resides in, the United States and further provided
that the alien may remain registered only:
(1) If the alien continues to lawfully reside in the United States
and registration does not become inconsistent with the terms upon which
the alien continues to lawfully reside in the United States, or
(2) If the alien ceases to reside in the United States, the alien
is qualified to be registered under paragraph (c) of this section. See
also Sec. 11.9(b).
(b) Agents. Any citizen of the United States who is not an
attorney, and who fulfills the requirements of this part may be
registered as a patent agent to practice before the Office. When
appropriate, any alien who is not an attorney, who lawfully resides in
the United States, and who fulfills the requirements of this part may
be registered as a patent agent to practice before the Office, provided
that such registration is not inconsistent with the terms upon which
the alien was admitted to, and resides in, the United States, and
further provided that the alien may remain registered only:
(1) If the alien continues to lawfully reside in the United States
and registration does not become inconsistent with the terms upon which
the alien continues to lawfully reside in the United States or
(2) If the alien ceases to reside in the United States, the alien
is qualified to be registered under paragraph (c) of this section. See
also Sec. 11.9(b).
(c) Foreigners. Any foreigner not a resident of the United States
who shall file proof to the satisfaction of the OED Director that he or
she is registered and in good standing before the patent office of the
country in which he or she resides and practices, and who is possessed
of the qualifications stated in Sec. 11.7, may be registered as a
patent agent to practice before the Office for the limited purpose of
presenting and prosecuting patent applications of applicants located in
such country, provided that the patent office of such country allows
substantially reciprocal privileges to those admitted to practice
before the Office. Registration as a patent agent under this paragraph
shall continue only during the period that the conditions specified in
this paragraph obtain. Upon notice by the patent office of such country
that a patent agent registered under this section is no longer
registered or no longer in good standing before the patent office of
such country, and absent a showing of cause why his or her name should
not be removed from the register, the OED Director shall promptly
remove the name of the patent agent from the register and publish the
fact of removal. Upon ceasing to reside in such country, the patent
agent registered under this section is no longer qualified to be
registered under this section, and the OED Director shall promptly
remove the name of the patent agent from the register and publish the
fact of removal.
(d) Interference matters. The Chief Administrative Patent Judge or
Vice Chief Administrative Patent Judge of the Board of Patent Appeals
and Interferences shall determine whether and the circumstances under
which an attorney who is not registered may take testimony for an
interference under 35 U.S.C. 24, or under Sec. 1.672 of this
subchapter.
Sec. 11.7 Requirements for registration.
(a) No individual will be registered to practice before the Office
unless he or she has:
(1) Applied to the USPTO Director in writing by completing an
application for registration form supplied by the OED Director and
furnishing all requested information and material; and
(2) Established to the satisfaction of the OED Director that he or
she:
(i) Possesses good moral character and reputation;
(ii) Possesses the legal, scientific, and technical qualifications
necessary for him or her to render applicants valuable service; and
(iii) Is competent to advise and assist patent applicants in the
presentation and prosecution of their applications before the Office.
(b)(1) To enable the OED Director to determine whether an
individual has the qualifications specified in paragraph (a)(2) of this
section, the individual shall:
(i) File a complete application for registration each time
admission to the registration examination is requested. A complete
application for registration includes:
(A) An application for registration form supplied by the OED
Director wherein all requested information and supporting documents are
furnished,
(B) Payment of the fees required by Sec. 1.21(a)(1) of this
subchapter,
(C) Satisfactory proof of scientific and technical qualifications,
and
(D) For aliens, provide proof that recognition is not inconsistent
with the terms of their visa or entry into the United States;
(ii) Pass the registration examination, unless the taking and
passing of the examination is waived as provided in paragraph (d) of
this section. Unless examination is waived pursuant to paragraph (d) of
this section, each individual seeking registration must take and pass
the registration examination to enable the OED Director to determine
whether the individual possesses the legal and competence
qualifications specified in paragraphs (a)(2)(ii) and (a)(2)(iii) of
this section. An individual failing the examination may, upon receipt
of notice of failure from OED, reapply for admission to the
examination. An individual failing the examination must wait thirty
days after the date the individual last took the examination before
retaking the examination. An individual reapplying shall:
(A) File a completed application for registration form wherein all
requested information and supporting documents are furnished,
(B) Pay the fees required by Sec. 1.21(a)(1) of this subchapter,
and
(C) For aliens, provide proof that recognition is not inconsistent
with the terms of their visa or entry into the United States; and
(iii) Provide satisfactory proof of possession of good moral
character and reputation.
(2) An individual failing to file a complete application for
registration will not be admitted to the examination and will be
notified of the incompleteness. Applications for registration that are
incomplete as originally submitted will be considered only when they
have been completed and received by OED, provided that this occurs
within sixty days of the mailing date of the notice of incompleteness.
Thereafter, a new and complete application for registration must be
filed. Only an individual approved as satisfying the requirements of
paragraphs (b)(1)(i)(A), (b)(1)(i)(B), (b)(1)(i)(C) and (b)(1)(i)(D) of
this section may be admitted to the examination.
(3) If an individual does not reapply until more than one year
after the mailing date of a notice of failure, that individual must
again comply with paragraph (b)(1)(i) of this section.
(c) Each individual seeking registration is responsible for
updating all information and answers submitted in or with the
application for registration based upon anything occurring between the
date the application for registration is signed by the individual, and
the date he or she is registered or recognized to practice before the
Office in patent matters. The update shall be filed within thirty days
after the date of the occasion that necessitates the update.
(d) Waiver of the Registration Examination for Former Office
Employees. (1) Former patent examiners who by July 26, 2004, had not
actively served four years in the patent examining corps, and were
serving in the corps at the time of their separation. The OED Director
may waive the taking of a registration examination in the case of any
individual meeting the requirements of paragraph (b)(1)(i)(C) of this
section who is a former patent examiner but by July 26, 2004, had not
served four years in the patent examining corps, if the individual
demonstrates that he or she:
(i) Actively served in the patent examining corps of the Office and
was serving in the corps at the time of separation from the Office;
(ii) Received a certificate of legal competency and negotiation
authority;
(iii) After receiving the certificate of legal competency and
negotiation authority, was rated at least fully successful in each
quality performance element of his or her performance plan for the last
two complete fiscal years as a patent examiner; and
(iv) Was not under an oral or written warning regarding the quality
performance elements at the time of separation from the patent
examining corps.
(2) Former patent examiners who on July 26, 2004, had actively
served four years in the patent examining corps, and were serving in
the corps at the time of their separation. The OED Director may waive
the taking of a registration examination in the case of any individual
meeting the requirements of paragraph (b)(1)(i)(C) of this section who
is a former patent examiner and by July 26, 2004, had served four years
in the patent examining corps, if the individual demonstrates that he
or she:
(i) Actively served for at least four years in the patent examining
corps of the Office by July 26, 2004, and was serving in the corps at
the time of separation from the Office;
(ii) Was rated at least fully successful in each quality
performance element of his or her performance plan for the last two
complete fiscal years as a patent examiner in the Office; and
(iii) Was not under an oral or written warning regarding the
quality performance elements at the time of separation from the patent
examining corps.
(3) Certain former Office employees who were not serving in the
patent examining corps upon their separation from the Office. The OED
Director may waive the taking of a registration examination in the case
of a former Office employee meeting the requirements of paragraph
(b)(1)(i)(C) of this section who by petition demonstrates possession of
the necessary legal qualifications to render to patent applicants and
others valuable service and assistance in the preparation and
prosecution of their applications or other business before the Office
by showing that he or she has:
(i) Exhibited comprehensive knowledge of patent law equivalent to
that shown by passing the registration examination as a result of
having been in a position of responsibility in the Office in which he
or she:
(A) Provided substantial guidance on patent examination policy,
including the development of rule or procedure changes, patent
examination guidelines, changes to the Manual of Patent Examining
Procedure, development of training or testing materials for the patent
examining corps, or development of materials for the registration
examination or continuing legal education; or
(B) Represented the Office in patent cases before Federal courts;
and
(ii) Was rated at least fully successful in each quality
performance element of his or her performance plan for said position
for the last two complete rating periods in the Office, and was not
under an oral or written warning regarding such performance elements at
the time of separation from the Office.
(4) To be eligible for consideration for waiver, an individual
formerly employed by the Office within the scope of one of paragraphs
(d)(1), (d)(2) or (d)(3) of this section must file a complete
application for registration and pay the fee required by Sec.
1.21(a)(1)(i) of this subchapter within two years of the individual's
date of separation from the Office. All other individuals formerly
employed by the Office, including former examiners, filing an
application for registration or fee more than two years after
separation from the Office, are required to take and pass the
registration examination. The individual or former examiner must pay
the examination fee required by Sec. 1.21(a)(1)(ii) of this subchapter
within thirty days after notice of non-waiver.
(e) Examination results. Notification of the examination results is
final. Within sixty days of the mailing date of a notice of failure,
the individual is entitled to inspect, but not copy, the questions and
answers he or she incorrectly answered. Review will be under
supervision. No notes may be taken during such review. Substantive
review of the answers or questions may not be pursued by petition for
regrade. An individual who failed the examination has the right to
retake the examination an unlimited number of times upon payment of the
fees required by Sec. 1.21(a)(1)(i) and (ii) of this subchapter, and a
fee charged by a commercial entity administering the examination.
(f) Application for reciprocal recognition. An individual seeking
reciprocal recognition under Sec. 11.6(c), in addition to satisfying
the provisions of paragraphs (a) and (b) of this section, and the
provisions of Sec. 11.8(c), shall pay the application fee required by
Sec. 1.21(a)(1)(i) of this subchapter upon filing an application for
registration.
(g) Investigation of good moral character and reputation. (1) Every
individual seeking recognition shall answer all questions in the
application for registration and request(s) for comments issued by OED;
disclose all relevant facts, dates and information; and provide
verified copies of documents relevant to his or her good moral
character and reputation. An individual who is an attorney shall submit
a certified copy of each of his or her State bar applications and moral
character determinations, if available.
(2)(i) If the OED Director receives information from any source
that reflects adversely on the good moral character or reputation of an
individual seeking registration or recognition, the OED Director shall
conduct an investigation into the good moral character and reputation of
that individual. The investigation will be conducted after the individual
has passed the registration examination, or after the registration
examination has been waived for the individual, as applicable. An
individual failing to timely answer questions or respond to an inquiry by
OED shall be deemed to have withdrawn his or her application, and shall be
required to reapply, pass the examination, and otherwise satisfy all the
requirements of this section. No individual shall be certified for
registration or recognition by the OED Director until, to the
satisfaction of the OED Director, the individual demonstrates his or
her possession of good moral character and reputation.
(ii) The OED Director, in considering an application for
registration by an attorney, may accept a State bar's character
determination as meeting the requirements set forth in paragraph (g) of
this section if, after review, the Office finds no substantial
discrepancy between the information provided with his or her
application for registration and the State bar application and moral
character determination, provided that acceptance is not inconsistent
with other rules and the requirements of 35 U.S.C. 2(b)(2)(D).
(h) Good moral character and reputation. Evidence showing lack of
good moral character and reputation may include, but is not limited to,
conviction of a felony or a misdemeanor identified in paragraph (h)(1)
of this section, drug or alcohol abuse; lack of candor; suspension or
disbarment on ethical grounds from a State bar; and resignation from a
State bar while under investigation.
(1) Conviction of felony or misdemeanor. An individual who has been
convicted of a felony or a misdemeanor involving moral turpitude,
breach of trust, interference with the administration of justice, false
swearing, misrepresentation, fraud, deceit, bribery, extortion,
misappropriation, theft, or conspiracy to commit any felony or
misdemeanor, is presumed not to be of good moral character and
reputation in the absence of a pardon or a satisfactory showing of
reform and rehabilitation, and shall file with his or her application
for registration the fees required by Sec. 1.21(a)(1)(ii) and (a)(10)
of this subchapter. The OED Director shall determine whether
individuals convicted of said felony or misdemeanor provided
satisfactory proof of reform and rehabilitation.
(i) An individual who has been convicted of a felony or a
misdemeanor identified in paragraph (h)(1) of this section shall not be
eligible to apply for registration during the time of any sentence
(including confinement or commitment to imprisonment), deferred
adjudication, and period of probation or parole as a result of the
conviction, and for a period of two years after the date of completion
of the sentence, deferred adjudication, and period of probation or
parole, whichever is later.
(ii) The following presumptions apply to the determination of good
moral character and reputation of an individual convicted of said
felony or misdemeanor:
(A) The court record or docket entry of conviction is conclusive
evidence of guilt in the absence of a pardon or a satisfactory showing
of reform or rehabilitation; and
(B) An individual convicted of a felony or any misdemeanor
identified in paragraph (h)(1) of this section is conclusively deemed
not to have good moral character and reputation, and shall not be
eligible to apply for registration for a period of two years after
completion of the sentence, deferred adjudication, and period of
probation or parole, whichever is later.
(iii) The individual, upon applying for registration, shall provide
satisfactory evidence that he or she is of good moral character and
reputation.
(iv) Upon proof that a conviction has been set aside or reversed,
the individual shall be eligible to file a complete application for
registration and the fee required by Sec. 1.21(a)(1)(ii) of this
subchapter and, upon passing the registration examination, have the OED
Director determine, in accordance with paragraph (h)(1) of this
section, whether, absent the conviction, the individual possesses good
moral character and reputation.
(2) Good moral character and reputation involving drug or alcohol
abuse. An individual's record is reviewed as a whole to see if there is
a drug or alcohol abuse issue. An individual appearing to abuse drugs
or alcohol may be asked to undergo an evaluation, at the individual's
expense, by a qualified professional approved by the OED Director. In
instances where, before an investigation commences, there is evidence
of a present abuse or an individual has not established a record of
recovery, the OED Director may request the individual to withdraw his
or her application, and require the individual to satisfactorily
demonstrate that he or she is complying with treatment and undergoing
recovery.
(3) Moral character and reputation involving lack of candor. An
individual's lack of candor in disclosing facts bearing on or relevant
to issues concerning good moral character and reputation when
completing the application or any time thereafter may be found to be
cause to deny registration on moral character and reputation grounds.
(4) Moral character and reputation involving suspension,
disbarment, or resignation from a profession. (i) An individual who has
been disbarred or suspended from practice of law or other profession,
or has resigned in lieu of a disciplinary proceeding (excluded or
disbarred on consent) shall be ineligible to apply for registration as
follows:
(A) An individual who has been disbarred from practice of law or
other profession, or has resigned in lieu of a disciplinary proceeding
(excluded or disbarred on consent) shall be ineligible to apply for
registration for a period of five years from the date of disbarment or
resignation.
(B) An individual who has been suspended on ethical grounds from
the practice of law or other profession shall be ineligible to apply
for registration until expiration of the period of suspension.
(C) An individual who was not only disbarred, suspended or resigned
in lieu of a disciplinary proceeding, but also convicted in a court of
a felony, or of a crime involving moral turpitude or breach of trust,
shall be ineligible to apply for registration until the conditions in
paragraphs (h)(1) and (h)(4) of this section are fully satisfied.
(ii) An individual who has been disbarred or suspended, or who
resigned in lieu of a disciplinary proceeding shall file an application
for registration and the fees required by Sec. 1.21(a)(1)(ii) and
(a)(10) of this subchapter; provide a full and complete copy of the
proceedings that led to the disbarment, suspension, or resignation; and
provide satisfactory proof that he or she possesses good moral
character and reputation. The following presumptions shall govern the
determination of good moral character and reputation of an individual
who has been licensed to practice law or other profession in any
jurisdiction and has been disbarred, suspended on ethical grounds, or
allowed to resign in lieu of discipline, in that jurisdiction:
(A) A copy of the record resulting in disbarment, suspension or
resignation is prima facie evidence of the matters contained in the
record, and the imposition of disbarment or suspension,
or the acceptance of the resignation of the individual shall be deemed
conclusive that the individual has committed professional misconduct.
(B) The individual is ineligible for registration and is deemed not
to have good moral character and reputation during the period of the
imposed discipline.
(iii) The only defenses available with regard to an underlying
disciplinary matter resulting in disbarment, suspension on ethical
grounds, or resignation in lieu of a disciplinary proceeding are set
out below, and must be shown to the satisfaction of the OED Director:
(A) The procedure in the disciplinary court was so lacking in
notice or opportunity to be heard as to constitute a deprivation of due
process;
(B) There was such infirmity of proof establishing the misconduct
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; or
(C) The finding of lack of good moral character and reputation by
the Office would result in grave injustice.
(i) Factors that may be taken into consideration when evaluating
rehabilitation of an individual seeking a moral character and
reputation determination. The factors enumerated below are guidelines
to assist the OED Director in determining whether an individual has
demonstrated rehabilitation from an act of misconduct or moral
turpitude. The factors include:
(1) The nature of the act of misconduct, including whether it
involved moral turpitude, whether there were aggravating or mitigating
circumstances, and whether the activity was an isolated event or part
of a pattern;
(2) The age and education of the individual at the time of the
misconduct and the age and education of the individual at the present
time;
(3) The length of time that has passed between the misconduct and
the present, absent any involvement in any further acts of moral
turpitude, the amount of time and the extent of rehabilitation being
dependent upon the nature and seriousness of the act of misconduct
under consideration;
(4) Restitution by the individual to any person who suffered
monetary losses through acts or omissions of the individual;
(5) Expungement of a conviction;
(6) Successful completion or early discharge from probation or
parole;
(7) Abstinence from the use of controlled substances or alcohol for
not less than two years if the specific misconduct was attributable in
part to the use of a controlled substance or alcohol, where abstinence
may be demonstrated by, but is not necessarily limited to, enrolling in
and complying with a self-help or professional treatment program;
(8) If the specific misconduct was attributable in part to a
medically recognized mental disease, disorder or illness, proof that
the individual sought professional assistance, and complied with the
treatment program prescribed by the professional, and submitted letters
from the treating psychiatrist/psychologist verifying that the
medically recognized mental disease, disorder or illness will not
impede the individual's ability to competently practice before the
Office;
(9) Payment of the fine imposed in connection with any criminal
conviction;
(10) Correction of behavior responsible in some degree for the
misconduct;
(11) Significant and conscientious involvement in programs designed
to provide social benefits or to ameliorate social problems; and
(12) Change in attitude from that which existed at the time of the
act of misconduct in question as evidenced by any or all of the
following:
(i) Statements of the individual;
(ii) Statements from persons familiar with the individual's
previous misconduct and with subsequent attitudes and behavioral
patterns;
(iii) Statements from probation or parole officers or law
enforcement officials as to the individual's social adjustments; and
(iv) Statements from persons competent to testify with regard to
neuropsychiatry or emotional disturbances.
(j) Notice to Show Cause. The OED Director shall inquire into the
good moral character and reputation of an individual seeking
registration, providing the individual with the opportunity to create a
record on which a decision is made. If, following inquiry and
consideration of the record, the OED Director is of the opinion that
the individual seeking registration has not satisfactorily established
that he or she possesses good moral character and reputation, the OED
Director shall issue to the individual a notice to show cause why the
individual's application for registration should not be denied.
(1) The individual shall be given no less than ten days from the
date of the notice to reply. The notice shall be given by certified
mail at the address appearing on the application if the address is in
the United States, and by any other reasonable means if the address is
outside the United States.
(2) Following receipt of the individual's response, or in the
absence of a response, the OED Director shall consider the individual's
response, if any, and the record, and determine whether, in the OED
Director's opinion, the individual has sustained his or her burden of
satisfactorily demonstrating that he or she possesses good moral
character and reputation.
(k) Reapplication for registration. An individual who has been
refused registration for lack of good moral character or reputation may
reapply for registration two years after the date of the decision,
unless a shorter period is otherwise ordered by the USPTO Director. An
individual, who has been notified that he or she is under investigation
for good moral character and reputation may elect to withdraw his or
her application for registration, and may reapply for registration two
years after the date of withdrawal. Upon reapplication for
registration, the individual shall pay the fees required by Sec.
1.21(a)(1)(ii) and (a)(10) of this subchapter, and has the burden of
showing to the satisfaction of the OED Director his or her possession
of good moral character and reputation as prescribed in paragraph (b)
of this section. Upon reapplication for registration, the individual
also shall complete successfully the examination prescribed in
paragraph (b) of this section, even though the individual has
previously passed a registration examination.
Sec. 11.8 Oath and registration fee.
(a) After an individual passes the examination, or the examination
is waived, the OED Director shall promptly publish a solicitation for
information concerning the individual's good moral character and
reputation. The solicitation shall include the individual's name, and
business or communication postal address.
(b) An individual shall not be registered as an attorney under
Sec. 11.6(a), registered as an agent under Sec. 11.6(b) or (c), or
granted limited recognition under Sec. 11.9(b) unless within two years
of the mailing date of a notice of passing registration examination or
of waiver of the examination the individual files with the OED Director
a completed Data Sheet, an oath or declaration prescribed by the USPTO
Director, and the registration fee set forth in Sec. 1.21(a)(2) of
this subchapter. An individual seeking registration as an attorney
under Sec. 11.6(a) must provide a certificate of good standing of the
bar of the highest court of a State that is no more than six months old.
(c) An individual who does not comply with the requirements of
paragraph (b) of this section within the two-year period will be
required to retake the registration examination.
Sec. 11.9 Limited recognition in patent matters.
(a) Any individual not registered under Sec. 11.6 may, upon a
showing of circumstances which render it necessary or justifiable, and
that the individual is of good moral character and reputation, be given
limited recognition by the OED Director to prosecute as attorney or
agent a specified patent application or specified patent applications.
Limited recognition under this paragraph shall not extend further than
the application or applications specified. Limited recognition shall
not be granted while individuals who have passed the examination or for
whom the examination has been waived are awaiting registration to
practice before the Office in patent matters.
(b) A nonimmigrant alien residing in the United States and
fulfilling the provisions of Sec. 11.7(a) and (b) may be granted
limited recognition if the nonimmigrant alien is authorized by the
Bureau of Citizenship and Immigration Services to be employed or
trained in the United States in the capacity of representing a patent
applicant by presenting or prosecuting a patent application. Limited
recognition shall be granted for a period consistent with the terms of
authorized employment or training. Limited recognition shall not be
granted or extended to a non-United States citizen residing abroad. If
granted, limited recognition shall automatically expire upon the
nonimmigrant alien's departure from the United States.
(c) An individual not registered under Sec. 11.6 may, if appointed
by an applicant, prosecute an international patent application only
before the United States International Searching Authority and the
United States International Preliminary Examining Authority, provided
that the individual has the right to practice before the national
office with which the international application is filed as provided in
PCT Art. 49, Rule 90 and Sec. 1.455 of this subchapter, or before the
International Bureau when the USPTO is acting as Receiving Office
pursuant to PCT Rules 83.1 bis and 90.1.
Sec. 11.10 Restrictions on practice in patent matters.
(a) Only practitioners who are registered under Sec. 11.6 or
individuals given limited recognition under Sec. 11.9(a) or (b) are
permitted to prosecute patent applications of others before the Office;
or represent others in any proceedings before the Office.
(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, or assist in any manner the representation of, 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, or assist in any manner the representation of 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.
(3) The words and phrases in paragraphs (b)(1) and (b)(2) of this
section are construed as follows:
(i) Represent and representation mean acting as patent attorney or
patent agent or other representative in any appearance before the
Office, or communicating with an employee of the Office with intent to
influence.
(ii) Assist in any manner means aid or help another person on a
particular patent or patent application involving representation.
(iii) Particular patent or patent application means any patent or
patent application, including, but not limited to, a provisional,
substitute, international, continuation, divisional, continuation-in-
part, or reissue patent application, as well as any protest,
reexamination, petition, appeal, or interference based on the patent or
patent application.
(iv) Participate personally and substantially. (A) Basic
requirements. The restrictions of Sec. 11.10(a)(1) apply only to those
patents and patent applications in which a former Office employee had
"personal and substantial participation," exercised "through
decision, approval, disapproval, recommendation, the rendering of
advice, investigation or otherwise." To participate personally means
directly, and includes the participation of a subordinate when actually
directed by the former Office employee in the patent or patent
application. Substantially means that the employee's involvement must
be of significance to the matter, or form a basis for a reasonable
appearance of such significance. It requires more than official
responsibility, knowledge, perfunctory involvement, or involvement on
an administrative or peripheral issue. A finding of substantiality
should be based not only on the effort devoted to a patent or patent
application, but also on the importance of the effort. While a series
of peripheral involvements may be insubstantial, the single act of
approving or participation in a critical step may be substantial. It is
essential that the participation be related to a "particular patent or
patent application." (See paragraph (b)(3)(iii) of this section.)
(B) Participation on ancillary matters. An Office employee's
participation on subjects not directly involving the substantive merits
of a patent or patent application may not be "substantial," even if
it is time-consuming. An employee whose official responsibility is the
review of a patent or patent application solely for compliance with
administrative control or budgetary considerations and who reviews a
particular patent or patent application for such a purpose should not
be regarded as having participated substantially in the patent or
patent application, except when such considerations also are the
subject of the employee's proposed representation.
(C) Role of official responsibility in determining substantial
participation. Official responsibility is defined in paragraph
(b)(3)(v) of this section. "Personal and substantial participation"
is different from "official responsibility." One's responsibility
may, however, play a role in determining the "substantiality" of an
Office employee's participation.
(v) Official responsibility means the direct administrative or
operating authority, whether intermediate or final, and either
exercisable alone or with others, and either personally or through
subordinates, to approve, disapprove, or otherwise direct Government
actions.
(A) Determining official responsibility. Ordinarily, those areas
assigned by statute, regulation, Executive Order, job description, or
delegation of authority determine the scope of an employee's "official
responsibility". All particular matters under consideration in the Office
are under the "official responsibility" of the Director of the Office, and
each is under that of any intermediate supervisor having responsibility for
an employee who actually participates in the patent or patent application
within the scope of his or her duties. A patent examiner would have
"official responsibility" for the patent applications assigned to him
or her.
(B) Ancillary matters and official responsibility. Administrative
authority as used in paragraph (v) of this section means authority for
planning, organizing and controlling a patent or patent application
rather than authority to review or make decisions on ancillary aspects
of a patent or patent application such as the regularity of budgeting
procedures, public or community relations aspects, or equal employment
opportunity considerations. Responsibility for such an ancillary
consideration does not constitute official responsibility for the
particular patent or patent application, except when such a
consideration is also the subject of the employee's proposed
representation.
(C) Duty to inquire. In order for a former employee, e.g., former
patent examiner, to be barred from representing or assisting in
representing another as to a particular patent or patent application,
he or she need not have known, while employed by the Office, that the
patent or patent application was pending under his or her official
responsibility. The former employee has a reasonable duty of inquiry to
learn whether the patent or patent application had been under his or
her official responsibility. Ordinarily, a former employee who is asked
to represent another on a patent or patent application will become
aware of facts sufficient to suggest the relationship of the prior
matter to his or her former office, e.g., technology center, group or
art unit. If so, he or she is under a duty to make further inquiry. It
would be prudent for an employee to maintain a record of only patent
application numbers of the applications actually acted upon by decision
or recommendation, as well as those applications under the employee's
official responsibility which he or she has not acted upon.
(D) Self-disqualification. A former employee, e.g., former patent
examiner, cannot avoid the restrictions of this section through self-
disqualification with respect to a patent or patent application for
which he or she otherwise had official responsibility. However, an
employee who through self-disqualification does not participate
personally and substantially in a particular patent or patent
application is not subject to the lifetime restriction of paragraph
(b)(1) of this section.
(vi) Pending means that the matter was in fact referred to or under
consideration by persons within the employee's area of official
responsibility.
(4) Measurement of the two-year restriction period. The two-year
period under paragraph (b)(2) of this section is measured from the date
when the employee's official responsibility in a particular area ends,
not from the termination of service in the Office, unless the two occur
simultaneously. The prohibition applies to all particular patents or
patent applications subject to such official responsibility in the one-
year period before termination of such responsibility.
(c) Former employees of the Office. This section imposes
restrictions generally parallel to those imposed in 18 U.S.C. 207(a)
and (b)(1). This section, however, does not interpret these statutory
provisions or any other post-employment restrictions that may apply to
former Office employees, and such former employees should not assume
that conduct not prohibited by this section is otherwise permissible.
Former employees of the Office, whether or not they are practitioners,
are encouraged to contact the Department of Commerce for information
concerning applicable post-employment restrictions.
(d) An employee of the Office may not prosecute or aid in any
manner in the prosecution of any patent application before the Office.
(e) Practice before the Office by Government employees is subject
to any applicable conflict of interest laws, regulations or codes of
professional responsibility.
Sec. 11.11 Notification.
A registered attorney or agent must notify the OED Director of his
or her postal address for his or her office, up to three e-mail
addresses where he or she receives e-mail, and business telephone
number, as well as every change to any of said addresses, or telephone
numbers within thirty days of the date of the change. A registered
attorney or agent shall, in addition to any notice of change of address
and telephone number filed in individual patent applications,
separately file written notice of the change of address or telephone
number to the OED Director. A registered practitioner who is an
attorney in good standing with the bar of the highest court of one or
more States shall provide the OED Director with the State bar
identification number associated with each membership. The OED Director
shall publish from the roster a list containing the name, postal
business addresses, business telephone number, registration number, and
registration status as an attorney or agent of each registered
practitioner recognized to practice before the Office in patent cases.
June 14, 2004 JON W. DUDAS
Acting Under Secretary of Commerce for
Intellectual Property and Acting Director of the
United States Patent and Trademark Office
*1 By statute, the USPTO may establish regulations, not
inconsistent with law, which "govern the recognition and conduct of
agents, attorneys or other persons representing applicants or other
parties before the Office, and may require them, before being
recognized as representatives of applicants or other persons, to
show that they are of good moral character and reputation and are
possessed of the necessary qualifications to render to applicants or
other persons valuable service, advice, and assistance in the
presentation or prosecution of their applications or other business
before the Office[.]" 35 U.S.C. 2(b)(2)(D). The Under Secretary of
Commerce for Intellectual Property and Director of the USPTO has
delegated his authority to the USPTO's Deputy General Counsel For
General Law. See AAO217-2 (2001).