United States Patent and Trademark Office OG Notices: 27 March 2007
United States Patent and Trademark Office
37 CFR Part 11
[Docket No.: PTO-C-2005-0013]
RIN 0651-AB55
Changes to Representation of Others
Before The United States Patent and Trademark Office
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Supplemental Notice of Proposed Rule Making.
SUMMARY: In December 2003, the United States Patent
and Trademark Office (Office) proposed amendments to, inter
alia, the rules governing disciplinary proceedings for attorneys
and agents who practice before the Office, principally rules 11.2,
11.3, 11.5, and 11.14 through 11.62. One hundred fifty-seven written
comments were received. After reviewing the written comments, the
Office has decided to revise several of the rules as then proposed and
request additional comments on those revised proposals. Other proposed
rules contained in the earlier Notice of Proposed Rule making remain
under consideration by the Office. This supplemental notice of proposed
rule making sets forth revisions that the Office is proposing to the
rules governing the conduct of investigations and disciplinary
proceedings. Interested individuals are invited to comment on the
proposed revisions in the rules.
DATES: To be ensured of consideration, written comments must be received
on or before June 1, 2007.
ADDRESSES: The Office seeks comments regarding the proposed revisions set
forth in the proposed rules. Comments should be sent by electronic mail
message over the Internet addressed to: ethicsrules.comments@uspto.gov.
Comments may also be submitted by mail addressed to: Mail Stop OED-Ethics
Rules, United States Patent and Trademark Office, P.O. Box 1450, Alexandria,
Virginia 22313-1450 or by facsimile to (571) 273-4097, marked to the
attention of Harry I. Moatz. Although comments may be submitted by mail or
facsimile, the Office prefers to receive comments via the Internet.
Comments may also be sent by electronic mail message over the Internet
via the Federal eRulemaking Portal. See the Federal eRulemaking Portal
Web site (http://www.regulations.gov) for additional instructions on
providing comments via the Federal eRulemaking Portal. txtparaThe
comments will be available for public inspection at the Office of
Enrollment and Discipline, located in Madison East, Eighth Floor, 600
Dulany Street, Alexandria, Virginia, and will be available via the
Office Internet Web site (address: http://www.uspto.gov). Because
comments will be made available for public inspection, information that
is not desired to be made public, such as an address or phone number,
should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Harry I. Moatz ((571) 272-6069), Director
of Enrollment and Discipline (OED Director), directly by phone, by
facsimile to (571) 273-6069 marked to the attention of Mr. Moatz, or by
mail addressed to: Mail Stop OED-Ethics Rules, U.S. Patent and Trademark
Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
SUPPLEMENTARY INFORMATION: On December 12, 2003, the
Office published a proposed rule in the Federal Register (68 FR 69441)
amending parts 1 and 2 of the rules and procedures governing patent and
trademark prosecution (Title 37 of the Code of Federal Regulations),
reserving part 10 and introducing part 11. Included in the proposed
rules for part 11 were rules governing the conduct of investigations
and disciplinary proceedings. Many of the proposed investigation and
disciplinary procedural rules were in many ways similar to the approach
of the current regulations. Other proposed rules were intended to
introduce new disciplinary procedures for practitioners who have been
suspended or disbarred in other disciplinary jurisdictions for ethical
or professional misconduct, practitioners convicted of serious crimes,
and practitioners having disability issues.
The December 12, 2003 Notice also proposed changes to the
ethics rules governing the conduct of recognized patent practitioners
and others practicing before the Office as well as rules governing
enrollment of recognized practitioners. The provisions on enrollment
were adopted in final rules on July 26, 2004, 69 FR 35428. Comments on
proposed changes to the substantive ethics rules remain under
consideration by the Office. The current notice does not address those
proposed rules.
In addition, several proposed rules referenced are directly or
indirectly dependent on the development of electronic systems to
implement rules governing annual dues, Sec. 11.8, and continuing legal
education. For example, Secs. 11.8(d), 11.12, and 11.13 are directly
dependent on development of the systems, whereas Sec. 11.11(b) is
indirectly dependent on the development. Further consideration of rules
dependent on implementing electronic systems awaits completion of the
development and implementation of the systems. Accordingly, the revised
rules proposed below do not refer to rules that depend on implementing
electronic systems, and no comments are invited regarding the omitted
referrals.
A detailed analysis is not included herein of the differences
between the rules proposed in December 2003 (proposed rules) and the
revised rules currently proposed (revised proposed sections). A
comparison of the proposed rules and the revised proposed sections is
being made available on the Internet at
http://www.uspto.gov/web/offices/dcom/olia/oed/comparison_ab55.pdf.
Comments are sought regarding the revised proposed sections
that introduce significant procedural or substantive changes. The
following revised proposed sections are believed to be those
introducing such changes: 11.2, 11.5, 11.18 through 11.22, 11.24
through 11.26, 11.28, 11.44, 11.45, and 11.52. This supplemental notice
includes other revised proposed sections (sections 11.1 (definition of
State), 11.3, 11.14, 11.15, 11.23, 11.27, 11.29, 11.33 through 11.36,
11.38 through 11.41, 11.43, 11.50, 11.51, and 11.54 through 11.61) that
are not believed to contain significant procedural or substantive
changes from the December 12, 2003 notice; proposed rules that have not
been revised (11.29 through 11.31, 11.37, 11.42, 11.46 through 11.49,
11.53, and 11.63 through 11.99); and two proposed rules that, as
revised, have been reserved (11.16 and 11.62). The latter three groups
of rules have been included to provide both context and perspective for
the revised proposed sections that contain significant changes. The
table below is included to assist readers in correlating the revised
proposed sections with the present rules. While it is believed that
further comments are unnecessary regarding rules that have not been
revised at all or whose revisions are not significantly changed in
procedure or substance, comments may nevertheless be submitted.
Table - Concordance of Sections 11.14 Through 11.99 With Part 10 and
Current Part 11
Section Part 10 and Part 11 concordance
11.1 New definition of State.
11.12 37 CFR 11.12(a), (b)(4), (c) and (d)
changes in language; Subsections 11.12(b)(5),
(b)(6) and (e) are new.
11.13 37 CFR 10.170, changes in language.
11.15 37 CFR 10.5, Subsection (b) is new.
11.114 37 CFR 10.14, changes in language; Subsection
11.114(f) is new.
11.115 37 CFR 10.15.
11.116-11.117 37 CFR 10.16-10.17.
[Reserved]
11.118 37 CFR 10.18, changes in language.
11.119 37 CFR 10.1 and 10.130(b),changes in language;
Subsections 11.119(b) and (d) are new.
11.120 New.
11.121 New.
11.122 New.
11.123 37 CFR 10.4, changes in language.
11.124 New.
11.125 New.
11.126 37 CFR 10.133(g), changes in language.
11.127 37 CFR 10.133(b) through (g), changes in language.
11.128 New.
11.129-11.31 New.
[Reserved]
11.132 37 CFR 10.132, changes in language.
11.133 New.
[Reserved]
11.134 37 CFR 10.134, changes in language; Subsection
11.1134(c) is new.
11.135 37 CFR 10.135, changes in language; Subsection
11.1135(a)(4) is new.
11.136 37 CFR 10.136, changes in language; Subsection
11.136(e) is new.
11.137 New.
[Reserved]
11.138 37 CFR 10.138, changes in language.
11.139 37 CFR 10.139, changes in language; Subsections
11.139(b) and (g) are new.
11.140 37 CFR 10.140, changes in language.
11.141 37 CFR 10.141, changes in language.
11.142 37 CFR 10.142.
11.143 37 CFR 10.143, changes in language.
11.144 37 CFR 10.144, changes in language.
11.145 37 CFR 10.145, changes in language and new.
11.146-11.148 37 CFR 10.146 - 10.148.
[Reserved]
11.149 37 CFR 10.149.
11.150 37 CFR 10.150, changes in language.
11.151 37 CFR 10.151, changes in language.
11.152 37 CFR 10.152, changes in language.
11.153 37 CFR 10.153.
11.154 37 CFR 10.154, changes in language.
11.155 37 CFR 10.155, changes in language; Subsections
11.1155(b) through (g) are new.
11.156 37 CFR 10.156, changes in language.
11.157 37 CFR 10.157, changes in language.
11.158 37 CFR 10.158, changes in language, Subsection
11.1158(d) is new.
11.159 37 CFR 10.159, changes in language, Subsection
11.1159(c) is new.
11.160 37 CFR 10.160, changes in language, Subsections
11.1160(d) through (f) are new.
11.161 37 CFR 10.61, changes in language; Subsections
11.1161(c) and (d) are new.
11.162-11.199 New.
[Reserved]
Comments regarding proposed rules 11.1100 through 11.1900
remain under consideration. The Office expects to publish a separate
supplemental notice of proposed rule making containing proposed
revisions to 11.1100 through 11.1900 and request comments.
In response to the proposed rule making published December 12,
2003, the Office received one hundred fifty-seven communications with
comments, including comments from seventeen organizations, thirteen law
firms, seven businesses, one hundred fifteen individuals, and four
anonymous sources.
This notice will address only comments concerning the
procedural aspects of the earlier proposed rules. It will not address
questions concerning the scope or substance of the Office's
practitioner ethics program, which it is expected will be the subject
of a separate notice. The Office has given full consideration to each
and every public comment submitted during the comment period. The
Office has revised proposed sections contained herein to retain and
clarify, inter alia, the OED Director's authority and
responsibility for investigations and prosecuting disciplinary matters.
The revised proposed sections clarify (1) procedures whereby the OED
Director may conduct investigations, (2) consequences for violating Sec.
11.18(b)(2), (3) the disciplinary jurisdiction of the Office, (4)
procedures for reciprocal discipline of practitioners who have been
suspended or disbarred for ethical or professional misconduct in other
jurisdictions, (5) procedures for disciplining practitioners convicted
of a serious crime, and (6) procedures for practitioners to raise their
own disability issues.
The revised proposed sections eliminate or introduce
substantive and procedural changes to the proposed rules. Many
revisions were not suggested by the comments. Accordingly, this notice
will not address each comment. Instead, the chief comments pertaining
to the revisions are addressed herein.
Congress has granted express authority to the Office to
"establish regulations, not inconsistent with law, which . . . may
govern the recognition and conduct of agents, attorneys, or other
persons representing applicants or other parties before the Office."
35 U.S.C. 2(b)(2)(D). Congress also provided that the "Director may,
after notice and opportunity for a hearing, suspend or exclude, either
generally or in any particular case, from further practice before the
Patent and Trademark Office, . . . any . . . agent, or attorney shown
to be incompetent or disreputable, or guilty of gross misconduct, or
who does not comply with the regulations established under section
2(b)(2)(D) of this title, or who shall, by word, circular, letter, or
advertising, with intent to defraud in any manner, deceive, mislead, or
threaten any applicant or prospective applicant, or other person having
immediate or prospective business before the Office. The reasons for
any such suspension or exclusion shall be duly recorded." 35 U.S.C.
32. In so doing, Congress vested express and implied authority with the
Office to prescribe rules of procedure that are applicable to
practitioners recognized to practice before the Office.
The primary purposes for adopting procedures for disciplining
practitioners who fail to conform to adopted standards include
affording practitioners due process, protecting the public, preserving
the integrity of the Office, and maintaining high professional standards.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 11, is
proposed to be amended as follows:
Section 11.1: The definition of state would be revised to clarify that
state includes Commonwealths and territories of the United States, as
well as the fifty states and the District of Columbia. Thus, the
"court of . . . any state" in Sec. 11.25(a) would include any courts of
the fifty states, the District of Columbia, and Commonwealths and
territories of the United States.
Section 11.2: Section 11.2 provides for the appointment and duties of the
Director of Enrollment and Discipline (OED Director), as well as petitions
for review of decisions of the OED Director. The duties have been revised
to clarify that investigations are conducted in matters involving possible
grounds for discipline, as opposed to specifying particular violations
that would be subject to investigation. The duties are further revised to
require the OED Director to provide practitioners with an opportunity to
respond to a reasonable inquiry by the OED Director. The OED Director will
make reasonable requests for information and documents to efficiently and
effectively ascertain whether grounds for discipline exist.
The revised proposed section also separates petitions to review
the OED Director's decisions in disciplinary matters from petitions in
enrollment matters. Subsections 11.2(c) and (d) would be limited to
petitions regarding enrollment and recognition. The Office is proposing
a specific procedure for petitioning to invoke the supervisory
authority of the USPTO Director in disciplinary matters in subsection
(e). The procedure in subsection (e) is comparable to the supervisory
review procedure in Sec. 1.181 and assures supervisory review when
appropriate.
Section 11.3: Section 11.3, which provides for suspension of rules, has
been revised to eliminate a prohibition in proposed rule 11.3(b) against
petitioning to waive a disciplinary rule. However, elimination of the
prohibition should not be construed as an indication that there could be
any extraordinary situation when justice requires waiver of a disciplinary
rule. The revised proposed section also eliminates the provisions in
proposed rule 11.3(d) for qualified privilege for complaints submitted to
the OED Director or any other official of the Office and for immunity for
Office employees from disciplinary complaint under Part 11 for any conduct
in the course of their official duties.
Section 11.5: The provisions of the sole paragraph of Sec. 11.5 adopted
in the final rules on July 26, 2004, would be renumbered as Sec. 11.5(a).
Revised subsection 11.5(b) defines practice before the Office.
Commentators urged that Congressional approval is
needed to define practice before the Office. Authority to govern
conduct implicitly includes authorization to recognize activities
constituting practice before the Office. The Internal Revenue Service
(IRS), citing as authority the provisions in, inter alia, 31
U.S.C. 330, defined practice before that agency. The language of Sec.
330(b) and 35 U.S.C. 32 are comparable. Section 330(b) provides
"[a]fter notice and opportunity for a proceeding, the Secretary may
suspend or disbar from practice before the Department a representative
who - (1) is incompetent; (2) is disreputable; (3) violates regulations
prescribed under this section; or (4) with intent to defraud, willfully
and knowingly misleads or threatens the person being represented or a
prospective person to be represented." The relevant language of Sec. 32
is quoted above. Congressional approval to define practice is implicit
in these comparable provisions. Accordingly, it is appropriate that the
Office define practice before the Office. Revised proposed Sec. 11.5(b)
covers all areas of law practiced before the Office. This definition
tracks the definition of "practice" adopted by the IRS. See 26 CFR
601.501(b)(10) and 31 CFR 10.2(d). The definition addresses law-related
services that comprehend all matters presented to the Office relating
to a client's rights, privileges, duties and responsibilities under the
laws and regulations administered by the Office.
Commentators also expressed concern as to whether practice
before the Office was defined too broadly by including participation in
drafting applications and including activities "incident to the
preparation and prosecution of patent applications before the Patent
Office." The Office does not seek to expand its jurisdiction.
Accordingly, "participation" in drafting applications and
activities "incident to the preparation and prosecution of patent
applications before the Patent Office" are no longer included in the
definition. However, the Office has authority to inform registered
practitioners whether activities are covered by their registration to
practice before the Office. For example, drafting patent applications
would continue to be practice before the Office. The revised proposed
sections indicate that a registered practitioner must be able to
provide clients with advice about relying upon alternative forms of
protection that may be available under State law. The revised proposed
section indicates that registered practitioners may use
nonpractitioners to conduct many of the activities associated with
practice before the Office, such as drafting patent applications,
provided they work under the supervision of the registered
practitioner. The rule permits the more than 30,000 registered patent
practitioners to employ non-practitioners to assist practitioners in
providing cost-efficient services to clients. It also permits every
attorney practicing before the Office in trademark cases to provide
cost-efficient services. Thus, practitioners may provide their legal
services at lower fees, a result favored by the Office and
practitioners. The revised proposed section also recognizes that
attorneys representing persons in enrollment and disciplinary matters
are engaged in practice before the Office.
But for limited situations noted below, a registered patent
agent is not authorized by his or her registration to practice before
the Office to draw up a contract or to select contract forms for a
client relating to a patent, such as an assignment or a license, if the
state in which the agent resides or practices considers drafting
contracts the practice of law. Assignments and licenses are the
creation of state, not federal, statutory law. Although 35 U.S.C. 152,
202, 204 and 261 refer to assignment or licensure of patents or patent
rights, assignments and licenses are forms of contracts, which are
creatures of state, not federal law. Contracts are enforceable under
state law. The authority to prepare contracts and provide advice
regarding the terms to include in contracts is subject to the state law
regarding who is authorized to practice law. In contrast, submission
for recordation of assignments and licenses is a ministerial act that
does not require legal training. It has been the long-standing position
of the Office that a registered patent agent may prepare a patent
assignment or license if not prohibited by state law, and an agent may
submit the assignment or license for recordation.
The Office solicits comment on whether it should explicitly
provide for circumstances in which a patent agent's causing an
assignment to be executed might be appropriate incidental to preparing
and filing an application. For example, execution of a standard
assignment document may be incidental to filing an application where
the inventor is an employee of an organization, such as a corporation
or partnership, and signed an agreement to assign inventions to the
organization. It would be also consistent with the law in some states
for a registered patent agent who is a regular (salaried) employee of
the organization acting for his or her employer to undertake to prepare
assignments only for the employer. If commentators propose that the
Office should provide for such situations, they should attempt to
articulate standards by which actions strictly incidental to an agent's
duties in preparing applications can be distinguished from actions
necessitating expert knowledge of state principles for which registered
practitioner status does not prepare agents.
The provision in proposed rule 11.5(b)(3) regarding a
practitioner's conduct occurring in a non-practitioner capacity has
been withdrawn as being unnecessary. Misconduct occurring in a
non-lawyer or non-agent capacity would be covered by the provisions
of revised proposed Sec. 11.19, which identify several grounds for
discipline, including, but not limited to, conduct that violates an
imperative USPTO Rule of Professional Conduct and a conviction of a
serious crime.
Section 11.16: Proposed rule 11.16, regarding financial books and records,
has been withdrawn. As revised, Sec. 11.16 would be reserved. Requests
for financial records during investigations are addressed infra under
Sec. 11.22.
Section 11.18: Section 11.18(b) provides that a practitioner certifies
the truthfulness of the content of his or her submissions to the Office.
Concern was expressed that the prohibition against "knowingly and
willfully" covering up by any "trick, scheme or device" a material fact
is unduly broad and meaningless. However, the language in Sec. 11.18(b),
"knowingly and willfully falsifies, conceals, or covers up by any trick,
scheme, or device a material fact," is taken from 18 U.S.C. 1001. Section
1001, titled "Statements or entries generally," provides: "Whoever, in any
matter within the jurisdiction of any department or agency of the
United States knowingly and willfully falsifies, conceals, or covers up
by any trick, scheme, or device a material fact, or makes any false,
fictitious or fraudulent statements or representations, or makes or
uses any false writing or document knowing the same to contain any
false, fictitious or fraudulent statement or entry, shall be fined not
more than $10,000 or imprisoned not more than five years, or both."
The Office is only repeating an obligation with which practitioners
otherwise have to comply. The section applies the statutory standard of
conduct applicable to the submission of material facts in courts to
proceedings in the Office. Case law has identified a number of
circumstances involving knowingly falsifying material facts by trick,
scheme, or device. See, e.g., U.S. v. Zavala, 139 F.2d 830 (2d Cir. 1944).
Accordingly, the language has not been changed.
Section 11.18(b)(1) has been revised to clarify that the rule
prohibits knowingly or willfully making false, fictitious, or
fraudulent statements or representations or knowingly or willfully
making or using a false writing or document known to contain any false,
fictitious, or fraudulent statement or entry. The section has also been
revised to point out that whoever violates the rule is subject to
penalties of criminal statutes in addition to those under 18 U.S.C.
1001. Statements in this section to the effect that violations of the
rule may jeopardize the validity of the application or document, or the
validity or enforceability of any patent, trademark registration, or
certificate resulting therefrom have been removed as being beyond the
scope of Sec. 10.18(b)(1). Inasmuch as an offending paper may have little
or no probative value, this section has been revised to state that
violation of the rule may jeopardize the probative value of such a paper.
Section 11.18(c) sets forth sanctions that may be imposed for
violations of Sec. 11.18(b). Commentators urged that the Office has no
authority to impose monetary sanctions for violations of Sec. 11.18(b).
As revised, the rule sets forth a non-exhaustive list of sanctions and
actions the Office may impose or take. The revised proposed section
removes reference to imposition of monetary sanctions. The sanctions
have been revised to include striking the offending paper, precluding a
practitioner from submitting a paper, and sanctions affecting the
weight given to the offending paper. Actions the Office may take
include referring a practitioner's conduct to the Office of Enrollment
and Discipline for appropriate action.
These sanctions conform to those discussed in conjunction with
the 1993 Amendment to Rule 11 of the Federal Rules of Civil Procedure.
The commentary to the 1993 Amendment indicated that a court "has
available a variety of possible sanctions to impose for violations,
such as striking the offending paper; . . . referring the matter to
disciplinary authorities." Like Rule 11 of the Fed. R. Civ. P., the
provisions in Sec. 11.18 do not attempt to enumerate the factors that
should be considered or the appropriate sanctions. The Office
anticipates that in taking action under Sec. 11.18 in applying sanctions,
it would use the proper considerations utilized in issuing sanctions or
taking action under Rule 11. Consideration may be given, for example,
to whether the improper conduct was willful or negligent; whether it
was part of a pattern of activity, or an isolated event; whether it
infected an entire application, or only one particular paper; whether
the person has engaged in similar conduct in other matters; whether the
conduct was intended to injure; what effect the conduct had on the
administrative process in time and expense; whether the responsible
person is trained in law; what is needed to deter that person from
repetition in the same case; and what is needed to deter similar
conduct by others: all of these in a particular case may be proper
considerations. See, 28 U.S.C.A. Fed. R. Civ. P. 11, Adv. Comm. Notes,
1993 Amendments, Subdivisions (b) and (c).
Section 11.19: Section 11.19 sets forth the disciplinary jurisdiction of
the Office. This section, as well as all other sections, have been revised
to eliminate disciplinary provisions directed to "other individuals."
Accordingly, revised proposed Sec. 11.19 no longer includes "other
individuals" within the disciplinary jurisdiction of the Office.
Proposed Sec. 11.19(b), which addressed the jurisdiction of
courts and voluntary bar associations to discipline practitioners for
misconduct, has been withdrawn in favor of the first paragraph of Sec.
11.1, which is in the final rules adopted on July 26, 2004. It is
believed that the first paragraph of Sec. 11.1 sets forth in a manner
superior to proposed rule Sec. 11.19(b) that nothing in "this Part . . .
preempt[s] 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."
"Misconduct" was defined differently in proposed rules
11.19(c) and 11.804 in the December 12, 2003 proposed rule making.
Proposed rule 11.19(c) identified misconduct constituting grounds for
discipline whereas proposed rule 11.804 identified professional
"misconduct." Reference to "misconduct" has been removed from
revised Sec. 11.19. As revised, Sec. 11.19(b) sets forth five grounds for
discipline. Although Sec. 11.804 is not included in this notice, it is
anticipated that Sec. 11.804 will be the only rule that describes
professional "misconduct." The grounds for discipline are clarified
to provide consistency among the revised disciplinary procedural rules.
The grounds for discipline are identified as conviction of a serious
crime; discipline on ethical grounds imposed in another jurisdiction or
disciplinary disqualification from participating in or appearing before
any Federal program or agency; failure to comply with any order of a
Court disciplining a practitioner, or any final decision of the USPTO
Director in a disciplinary matter; violation of the imperative USPTO
Rules of Professional Conduct; and violation of the oath or declaration
taken by the practitioner.
Section 11.20: Section 11.20 sets out the disciplinary sanctions the
USPTO Director may impose on a practitioner after notice and opportunity
for a hearing. Subsection 11.20(a)(2) has been revised to provide for
suspension for an appropriate period of time. The revised proposed section
removes provisions that comments suggested needed clarification, such as
providing for suspension for an "indefinite period" and suspension for a
period not in excess of five years. As revised, suspension may be imposed
for a period that is appropriate under the facts and circumstances of the
case. Subsection 11.20(a)(3) provides for reprimand, including both public
and private reprimand. Subsection 11.20(b) provides that the USPTO Director
may require a practitioner to make restitution either to persons
financially injured by the practitioner's conduct or to an appropriate
client's security trust fund, or both, as a condition of probation or
of reinstatement. The restitution would be limited to the return of
unearned practitioner fees or misappropriated client funds. The rule
does not contemplate restitution for the value of an invention or patent.
Section 11.21: Section 11.21 provides that a warning is not a disciplinary
sanction and that the OED Director may issue a warning at the conclusion of
an investigation. Inasmuch as a warning is not a disciplinary sanction, a
warning would not be made public. A provision in the proposed rule requiring
the OED Director to consult with and obtain the consent of a Committee on
Discipline panel before issuing a warning has been removed as procedurally
unnecessary and unduly burdensome. Another provision in the proposed rule,
that the warning be final and unreviewable, also has been removed. To afford
an avenue for review in disciplinary matters, paragraph (e) has been added
to the revised Sec. 11.3 to enable a practitioner to invoke the USPTO
Director's supervisory authority.
Section 11.22: Section 11.22 sets forth provisions regarding the conduct
of investigations. Consistent with suggestions from commentators, the rule
has been revised to distinguish between complaints that initiate
investigations and complaints that initiate disciplinary proceedings.
Section 11.22 has been revised to refer to communications that initiate an
investigation as grievances. The revised proposed sections, such as Sec.
11.34, refer to communications initiating disciplinary proceedings as
complaints. The revised proposed sections also omit as unnecessary
provisions specifying procedures for screening and docketing matters.
As revised, Sec. 11.22 provides that a practitioner will be
notified in writing of the initiation of an investigation into whether
the practitioner has engaged in conduct constituting grounds for
discipline. In conducting an investigation, the OED Director may
request information or evidence from the grievant, the practitioner, or
any person who may reasonably be expected to provide information and
evidence needed in connection with the grievance or investigation. See
revised proposed Sec. 11.22(f).
As discussed above, proposed Sec. 11.16, regarding financial
books and records, has been withdrawn. Nevertheless, the OED Director
may still request such information pursuant to revised proposed Sec.
11.22(f) in order to protect the public from practitioners who
commingle client funds or improperly fail to refund unearned client
funds. For example, evidence that one account of a practitioner has not
been properly maintained or that funds of one client have not been
properly handled should constitute cause for verifying the accuracy of
the account that the practitioner maintains or should maintain
containing the funds of the client for practice before the Office.
Additionally, either a check drawn on a client trust account returned,
for example, due to insufficient funds, or the failure to timely refund
unearned funds to a client should similarly constitute cause to verify
the contents of the same account. Where the OED Director receives
information or evidence involving possible financial issues, the
request to the practitioner would be limited to copies of books and
records maintained by or for the practitioner for practice before the
Office regarding the client. The foregoing examples are the same as
those the American Bar Association recommends as grounds for inquiring
into a lawyer's accounts. See Rule 30, Verification Of Bank Accounts,
of the American Bar Association's Rules for Lawyer Disciplinary
Enforcement. The books and records received by the OED Director from
the practitioner would be treated as confidential and their use will be
limited to the Office's investigation and disciplinary proceeding.
As noted above, the OED Director may request information or
evidence. The OED Director's letters to practitioners request
information; the letters are no longer called requirements for
information. The Office's regulatory ability to require information is
on appeal to the Federal Circuit. Among the ethics rules that remain
under consideration are the provisions of ABA Model Rule 8.1. Model
Rule 8.1 provides that, but for client confidences protected by another
rule, a practitioner is prohibited from knowingly failing to respond to
a lawful demand for information from a disciplinary authority. A
practitioner's failure to comply with the OED Director's request for
information conforming to Model Rule 8.1 would risk violating the rule.
The Office intends by the change in nomenclature of the OED Director's
letter not to change the sanctioning ability of the Office. However,
the Office's regulatory ability to take sanctions in view of failure to
comply with a request will be addressed in ethics rules that will
follow as the Office will be informed by any judicial decision on the
question. Additionally, the OED Director, when recommending that the
Committee on Discipline approve the institution of formal charges, may
reference the practitioner's refusal to provide information or records.
The Committee may draw an adverse inference from the practitioner's
refusal to provide information or records in determining whether
probable cause exists to believe a disciplinary rule has been violated.
When the Committee on Discipline finds probable cause, a disciplinary
proceeding can be initiated. After the practitioner files an answer,
the OED Director may seek the hearing officer's permission to obtain a
subpoena for production of relevant information or records. Proposed Sec.
11.52, pertaining to discovery, has been revised to address expressed
concerns that the current rule inappropriately limits discovery.
Revised proposed section 11.52(a) would permit discovery when a party
establishes that discovery is reasonable and relevant. Information or
records refused during an investigation may be reasonable and relevant
in discovery. See Rules 11.38 and 11.58(a).
Section 11.22(f)(2) provides for requesting information and
evidence regarding possible grounds for discipline of a practitioner
from a non-grieving client. The request cannot be made unless the OED
Director has obtained either the consent of the practitioner or a
finding by a Contact Member of the Committee on Discipline that good
cause exists to believe that the possible ground for discipline alleged
has occurred with respect to non-grieving clients. The Office agrees
with the many comments that contacts with non- grieving clients about a
practitioner without contacting the practitioner first should be rare.
While many jurisdictions can contact non-grieving clients without
established procedures, the Office considers that adoption of
procedures to govern the exercise of such authority will best assure
that this extraordinary step will be taken only when warranted. The
Office therefore proposes to adapt a procedure followed in California,
namely Rule 2410b, for the protection of practitioners and their
clients. Accordingly, if a practitioner declines to consent,
communication with the non-grieving client can occur if a Contact
Member finds good cause to believe that a possible ground for
discipline has occurred with respect to the non-grieving client. The
Contact Member will closely scrutinize a showing made by the OED
Director in deciding whether to grant or deny authorization to request
the information or evidence.
Requesting information and documents from practitioners, as
well as from non-grieving clients enables the OED Director, and
ultimately the Office, to efficiently and effectively ascertain whether
grounds for disciplining a practitioner exist. The clarification of
Sec. 11.22 is intended to result in a fair and consistent application of
the rules to practitioners and enable the USPTO Director to protect the
public.
Section 11.24: Section 11.24 provides a procedure for reciprocal
discipline of a practitioner who has been disbarred or suspended
by another jurisdiction (including any federal court and any
state or federal administrative body or tribunal), or disciplinarily
disqualified from participating in or appearing before any Federal
program or agency. The Office would define the terms "disqualified,"
"Federal program," and "Federal agency" for the purposes of deciding
whether a practitioner has been disqualified from participating in or
appearing before any Federal program or agency. For that purpose,
"disqualified" would mean any action that prohibits a practitioner from
participating in or appearing before the program or agency, regardless
of how long the prohibition lasts or the specific terminology used. The
program or agency need not use the term "disqualified" to describe the
action. For example, an agency may use analogous terms such as "suspend,"
"decertify," "exclude," "expel," or "debar" to describe the
practitioner's disqualification from participating in the program or
the agency. For the purposes of deciding whether a practitioner has
been disqualified from participating in or appearing before any Federal
program or agency, "Federal program" would mean any program
established by an Act of Congress or administered by a Federal agency
and "Federal agency" would mean any authority of the executive
branch of the Government of the United States.
If an attorney has been disbarred or suspended in another
jurisdiction, reciprocal discipline before the Office applies
regardless whether the practitioner remains registered as an attorney
or agent. If an attorney or registered patent agent is disciplinarily
disqualified from participating in or appearing before any Federal
program or agency, the practitioner is subject to reciprocal discipline
before the Office. The revised proposed section applies reciprocal
discipline to both attorneys and registered patent agents.
The reciprocal disciplinary proceeding would be initiated
before the USPTO Director. The practitioner would be served with notice
of the reciprocal proceeding, and provided an opportunity to reply. The
practitioner would also be provided with a copy of the record or order
of disbarment, suspension or disciplinary disqualification, and a
complaint.
The USPTO Director would hear the reciprocal discipline matter
on the documentary record unless the USPTO Director determines that an
oral hearing is necessary. After careful review of the statute and case
law, it has been concluded that oral hearings are not required for all
licensing proceedings. 5 U.S.C. 558 does not itself require the
application of 5 U.S.C. 556 to licensing proceedings, such as a
disciplinary case. 5 U.S.C. 554 requires the application of Sec. 556
"in every case of adjudication required by statute to be determined
on the record after opportunity for agency hearing," with exceptions
not applicable here. See Sec. 554(a). The provision of Sec. 554 applies
only where Congress has clearly indicated that a hearing required by
statute must be a "trial-type hearing on the record." R.R.
Comm'n of Texas v. United States, 665 F.2d 221, 227 (D.C. Cir.
1985), citing United States v. Florida E. Coast Ry., 410
U.S. 224, 234 (1973). There are no decisions so interpreting 35 U.S.C.
32. That statute requires "notice and opportunity for a hearing,"
and that "the reasons for any [resulting] suspension or exclusion
shall be duly recorded." A requirement to record the reasons for the
decision is not the same as requiring a trial-type hearing.
Accordingly, it is not believed that Sec. 32 triggers Secs. 554 and 556.
Procedural due process is afforded by providing notice and opportunity
to be heard on a documentary record, and recording the reasons for the
decision. This is consistent with enrollment proceedings where these
matters have long been conducted on the documentary record. Where the
USPTO Director determines an oral hearing in a reciprocal disciplinary
matter is necessary, the same would be provided.
No change is contemplated to continuing to have oral hearings
in disciplinary proceedings before hearing officers conducted under
Sec. 11.44. Current Sec. 10.144 and revised proposed Sec. 11.44 provide
for conducting disciplinary proceedings before the administrative law judge
or hearing officer pursuant to Sec. 556. They also provide for the
hearings to be stenographically recorded and transcribed, and the
testimony of witnesses to be received under oath or affirmation.
Section 11.24(c) has been revised to address stayed discipline.
If a disciplinary sanction imposed by another jurisdiction or
disciplinary disqualification imposed in the Federal program or agency
has been stayed, any reciprocal discipline imposed by the USPTO may be
deferred until the stay expires.
In reciprocal discipline proceedings, the practitioner would be
provided with a forty-day period to inform the USPTO Director of: (1)
any argument that the practitioner was not disbarred, suspended or
disciplinarily disqualified; and (2) any claim, predicated upon the
grounds set forth in Secs. 11.24(d)(1)(i) through (d)(1)(iii), that the
imposition of the identical discipline would be unwarranted and the
reasons for that claim. After expiration of the forty-day period, the
USPTO Director would consider any timely filed response.
Pursuant to Secs. 11.24(d)(1)(i) through (d)(1)(iii), the
practitioner or OED Director could present one or more of the only
following three arguments: (1) that the procedure elsewhere was so
lacking in notice or opportunity to be heard as to constitute a
deprivation of due process; (2) that there was such infirmity of proof
establishing the conduct as to give rise to the clear conviction that
the Office could not, consistently with its duty, accept as final the
conclusion on that subject; or (3) that the imposition of the same
discipline by the Office would result in grave injustice. Under
Sec. 11.24(d)(2), if the USPTO Director determines that any of the elements
of Secs. 11.24(d)(1)(i) through (d)(1)(iii) exist, the USPTO Director
would enter an appropriate order. For example, the USPTO Director might
order a hearing before a hearing officer limited to the particular element.
Revised proposed Sec. 11.24(f) provides for conditions when it
would be permissible to impose reciprocal discipline nunc pro
tunc. The practitioner must have promptly notified the OED
Director of his or her discipline or disciplinary disqualification and
must clearly and convincingly establish that the practitioner
voluntarily ceased all activities related to practice before the Office
and complied with all provisions of Sec. 11.58. In such circumstances,
the effective nunc pro tunc date would be the date the
practitioner voluntarily ceased all activities related to practice
before the Office and complied with all provisions of Sec. 11.58.
Reinstatement following reciprocal discipline is addressed in
Sec. 11.24(g). A practitioner could petition for reinstatement under
conditions set forth in Sec. 11.60 no sooner than completion of the
period of reciprocal discipline imposed, and compliance with all
provisions of Sec. 11.58.
Section 11.25: Section 11.25 would provide a revised
procedure for interim suspension and discipline based upon conviction
of committing a serious crime. Revised proposed Sec. 11.25 parallels the
procedure in Rule 19, Lawyers Found Guilty Of A Crime, of the Model
Rules for Lawyer Disciplinary Enforcement of the American Bar
Association. If a practitioner is convicted of a serious crime, the OED
Director would initiate disciplinary action under this section without
authorization of the Committee on Discipline. Serious crime was defined
in proposed Sec. 11.1 as meaning (1) any criminal offense classified as a
felony under the laws of the United States, any state or any foreign
country where the crime occurred, or (2) any crime a necessary element
of which, as determined by the statutory or common law definition of
such crime in the jurisdiction where the crime occurred, includes
interference with the administration of justice, false swearing,
misrepresentation, fraud, willful failure to file income tax returns,
deceit, bribery, extortion, misappropriation, theft, or an attempt or a
conspiracy or solicitation of another to commit a "serious crime."
That definition, which is derived from the definitions of "serious
crime" included in Rule 19(C) of the American Bar Association Model
Rules for Lawyer Disciplinary Enforcement and Rule I(B) of the American
Bar Association Model Federal Rules of Disciplinary Enforcement, would
apply in Sec. 11.25.
Before initiating action, the OED Director would exercise
reasonable care to confirm that the crime is a "serious crime" and
that the convicted individual is a practitioner before the Office. For
example, OED would consult with either or both prosecutor or state
disciplinary counsel to confirm the classification of the crime, as
well as obtain information confirming the identity of the convicted
individual. OED could also compare information it receives regarding
convicted individuals with its records and other records in the Office,
in addition to asking the practitioner whether he or she is the person
who was convicted. The OED Director would file with the USPTO Director
proof of the finding of guilt, and a complaint against the practitioner
complying with Sec. 11.34 predicated upon the conviction. The OED
Director would request issuance of a notice and order set forth in
Sec. 11.25(b)(1). If the crime is not a serious crime, the matter would
be processed in the same manner as any other information or evidence of
a possible violation of an imperative Rule of Professional Conduct coming
to the attention of the OED Director.
Under revised proposed Sec. 11.25(b), interim suspension could
not be imposed until the practitioner has been afforded notice and
opportunity to be heard. The USPTO Director would serve the
practitioner with notice complying with Sec. 11.35(a), (b) or (c)
containing a copy of the court record; docket entry or judgment of
conviction; a copy of the complaint; and an order directing the
practitioner to inform the USPTO Director, within forty days of the
date of the notice, of any predicate challenge establishing that
interim suspension may not properly be ordered, such as that the crime
did not constitute a "serious crime" or that the practitioner is
not the individual who was convicted. See Sec. 11.25(b)(2). The hearing
for interim suspension would be heard on the documentary record and the
practitioner's assertion of any predicate challenge. See Sec.
11.25(b)(3). The practitioner would be placed on interim suspension
immediately upon proof that the practitioner has been convicted of a
serious crime regardless of the pendency of any appeal. See Sec.
11.25(b)(3)(i). Interim suspension may be terminated in the interest of
justice upon a showing of extraordinary circumstances. See Sec.
11.25(b)(3)(ii).
Upon entering an order of interim suspension, the matter would
be referred to the OED Director for institution of a formal
disciplinary proceeding before a hearing officer. A disciplinary
proceeding so instituted would not be brought to final hearing until
all direct appeals from the conviction are concluded. Review of the
initial decision of the hearing officer would be pursuant to Sec. 11.55.
See Sec. 11.25(b)(4).
With respect to convictions in the United States, a certified
copy of the court record, docket entry, or judgment of conviction in a
court of the United States would be conclusive evidence that the
practitioner committed the crime and was convicted. The sole issue in a
formal disciplinary proceeding would be the nature and extent of the
discipline to be imposed as a consequence of the conviction. See Sec.
11.25(c)(1).
Inasmuch as not all other countries always meet minimum due
process standards, a conviction in a foreign court even of a "serious
crime" may not result in automatic disqualification. Therefore, a
practitioner convicted in a foreign court of a serious crime may
demonstrate in any hearing by clear and convincing evidence: that
(1) the procedure in the foreign country was so lacking in notice or
opportunity to be heard as to constitute a deprivation of due process
and rebut the prima facie evidence of guilt, or (2) there
are material facts to be considered when determining if a serious crime
was committed and whether a disciplinary sanction should be entered.
See Sec. 11.25(c)(ii).
Section 11.26: Section 11.26 has been revised to introduce provisions
for settlement in disciplinary matters. The proposed rules did not provide
for settlement. The revised proposed section codifies current practices.
Section 11.27: The provisions in Sec. 11.27 set forth the procedure for
excluding a practitioner on consent. Subsection 11.27(b) has been revised
to provide that upon entering an order excluding a practitioner, the USPTO
Director may include in the order provisions for other appropriate actions,
such as restitution of unearned fees or misappropriated funds. See
Sec. 11.22(b).
Section 11.28: The provisions in Sec 11.28 regarding incapacitated
practitioners have been revised to be limited to apply to disciplinary
proceedings. As revised, the OED Director would not initiate efforts to
have a practitioner declared incapacitated in disciplinary or non-
disciplinary instances. Instead, a practitioner may move to have the
proceeding held in abeyance because of a current disability or addiction.
See Sec. 11.28(a). If the practitioner's motion is granted, the
practitioner will be transferred to disability inactive status and
precluded from practicing before the Office. See Sec. 11.28(a)(2). Upon
motion of the practitioner or the OED Director, the practitioner may be
restored to active status, which will cause the disciplinary proceeding
to resume. See Secs. 11.28(b), (d) and (e). A practitioner engaging in
practice before the Office or representing a party in litigation while on
disability inactive status would be good cause for the OED Director to file
a motion to resume a disciplinary proceeding that has been held in
abeyance.
Section 11.36: Section 11.36, which provides for the practitioner's
answer to a complaint, has been revised to provide that
a practitioner must affirmatively state any intent to raise disability
as a mitigating factor. We agree with comments that disability itself
should not be a mitigating factor. Accordingly, the revised proposed
section requires the respondent practitioner to specify the disability,
its nexus to the misconduct, and the reason it provides mitigation.
Disability, such as mental disability or chemical dependency, including
alcoholism or drug abuse, would be a mitigating factor only if the
respondent practitioner makes an adequate showing of nexus and
mitigation. Such a showing would be expected to include (1) medical
evidence that the practitioner is affected by a chemical dependency or
mental disability; (2) evidence that the chemical dependency or mental
disability caused the misconduct; (3) the practitioner's recovery from
the chemical dependency or mental disability is demonstrated by a
meaningful and sustained period of successful rehabilitation; (4) the
recovery arrested the misconduct; and (5) recurrence of the misconduct
is unlikely. These are the same standards set forth Section 9.32(i) of
the American Bar Association Standards for Imposing Lawyer Sanctions
(1992).
Section 11.36(c) has been revised to require a disability
defense to be raised at the answer stage. A practitioner who fails to
raise the defense at the answer stage cannot rely on the disability
absent a showing of good cause to the hearing officer for leave to
amend the answer. Revised Sec. 11.36(c) employs language similar to the
requirement in the Federal Rules of Criminal Procedure for fixing a
deadline for raising an insanity defense. Rule 12.2 of the Fed. R.
Crim. P. states "A defendant who intends to assert a defense of
insanity at the time of the alleged offense must so notify an attorney
for the government in writing within the time provided for filing a
pretrial motion, or at any later time the court sets, and file a copy
of the notice with the clerk. A defendant who fails to do so cannot
rely on an insanity defense. The court may, for good cause, allow the
defendant to file the notice late, grant additional trial-preparation
time, or make other appropriate orders."
Section 11.39: Section 11.39(g) has been added to provide that the hearing
officer not engage in ex parte discussions with any party regarding the
merits of the complaint, beginning with appointment and concluding with
the final agency decision. The addition clarifies the period during which
the hearing officer is not permitted to discuss the merits of a complaint.
The period is of limited duration to enable counsel representing the agency
to consult, if necessary, with the hearing officer if court review is
sought of the final agency decision.
Section 11.40: In view of changes in the Office's organization and the
authorities of the Deputy General Counsel for Intellectual Property and
Solicitor, proposed Sec. 11.40(b) has been revised to provide that the
Solicitor and attorneys in the Office of the Solicitor shall represent the
OED Director in disciplinary proceedings.
Section 11.40(b) also has been revised to provide that the
USPTO Director may consult with the OED Director and attorneys
representing the OED Director after a final agency decision has been
entered concerning any further proceedings. The need for consultation
arises in the event that the practitioner seeks review of the decision
in the United States District Court for the District of Columbia
pursuant to 35 U.S.C. 32. There is no necessity after a final agency
decision issues to continue to maintain a wall between the USPTO
Director or officials representing the USPTO Director, the OED
Director, or those representing the OED Director. The revision codifies
current practice and provides that after a final decision is entered in
a disciplinary proceeding, the OED Director and attorneys representing
the OED Director shall be available to counsel the USPTO Director, the
General Counsel, and the Deputy General Counsel for General Law in any
further proceedings.
Section 11.44: Oral hearings before a hearing officer would be conducted
as if the proceeding were subject to 5 U.S.C. 556. A hearing officer would
thus continue to preside over the disciplinary proceeding. An oral hearing
would be unnecessary where, for example, there is a settlement, or the
hearing officer entered an order default judgment or summary judgment. If
there is an oral hearing, it would also continue to be stenographically
recorded and transcribed, and the testimony of witnesses would continue to
be received under oath or affirmation. A copy of the transcript of the
hearing would continue to become part of the record. The OED Director and
respondent would make their own arrangements with the stenographer to
obtain a copy of the hearing transcript. An excluded or suspended
practitioner would reimburse the Office for OED's expense of the hearing
transcript cost, and any fee paid for the services of the reporter. See
proposed Sec. 11.60(d)(2)(i). The expense of deposition transcripts would
be borne by the party requesting depositions inasmuch as the rules are
silent regarding such costs.
Section 11.45: This section has been revised to provide for amending the
complaint without authorization from the Committee on Discipline. The
purpose of the amendments would be to include additional charges based upon
conduct committed before or after the complaint was filed. The hearing
officer would have to approve amendment of the complaint and authorize
amendment of the answer. The revised practice conforms to disciplinary
procedural rules adopted in several states. For example, Missouri
Disciplinary Rule 5.15(b) provides that "[i]f any amendment substantially
changes the charges, the respondent shall be given a reasonable time to
respond." Florida's Rule 3-7.6(h) is a disciplinary rule governing
pleadings, including complaints, in Procedures Before a Referee.
Rule 3-7.6(h)(6) provides "[p]leadings may be amended by order of the
referee, and a reasonable time shall be given within which to respond
thereto." In the First Department of New York, disciplinary procedure
Sec. 605.11 provides "[w]henever, in the course of any hearing under these
Rules, evidence shall be presented upon which another charge or charges
against the Respondent might be made, it shall not be necessary to
prepare or serve an additional Notice of Charges with respect thereto,
but the Referee may, after reasonable notice to the Respondent and an
opportunity to answer and be heard, proceed to the consideration of
such additional charge or charges as if they had been made and served
at the time of service of the Notice of Charges, and may render its
decision upon all such charges as may be justified by the evidence in
the case." As revised, procedural efficiencies are realized by
reducing the time and resources needed to amend the complaint, while
expediting resolution of all disciplinary issues that the OED Director
becomes aware of during the proceeding.
Section 11.49: This section would maintain the "clear and convincing"
burden of proof. Comments overwhelmingly expressed a preference for
maintaining the current burden of proof, as opposed to reducing the burden
to a preponderance of evidence.
Section 11.52: Section 11.52(b)(1) has been revised pursuant to several
suggestions to permit reasonable and relevant discovery. It also permits
reasonable and relevant discovery of records and information a practitioner
did not disclose or release during an investigation. The provision in the
proposed rules for discovery of the identity of Government employees who
have investigated the case has been eliminated as unnecessary inasmuch as
the investigator(s) is or are named in and sign the inquiry letters mailed
to the practitioner.
Section 11.55: Section 11.55 has been reorganized and revised to clarify
the process of appealing a decision to the USPTO Director. As revised, the
rule would clarify who is the appellant and require all briefs, including
reply briefs, to comply with specified standards.
Section 11.56: Section 11.56(b) has been revised to provide that the final
decision of the USPTO Director, in addition to disciplining a practitioner
or dismissing a disciplinary proceeding, may also reverse or modify the
initial decision. The revision conforms to current practice and inherent
authority. Section 11.56(b) is further revised to provide that a final
decision suspending or excluding a practitioner will require compliance
with Sec. 11.58. The final order also may condition reinstatement upon a
showing that the practitioner has taken steps to correct or mitigate the
matter forming the basis of the action or to prevent a recurrence of the
same or similar conduct. Section 11.56(c) has been revised to add a ground
on which a request for reconsideration or modification could be granted.
Specifically, the request could be granted based on an error of law, a
basis that is not provided for by the current rule.
Section 11.57: Section 11.57(a), which pertains to review of final
decisions of the USPTO Director at the United States District Court for
the District of Columbia, has been revised to draw the practitioner's
attention to the necessity for complying with service requirements of
Rule 4 of the Federal Rules of Civil Procedure and 37 CFR Sec. 104.2.
Section 11.57(b), as revised, provides that except as provided for in
Sec. 11.56(c), an order for discipline in a final decision will not be
stayed except on proof of exceptional circumstances. Excluded or suspended
practitioners would be unable to represent clients before the Office or
earn income from representing clients before the Office. Accordingly, such
circumstances are considered to be the normal result of exclusion or
suspension, and would not render a case exceptional to merit a stay of
discipline pending appeal. Proof of an exceptional circumstance necessarily
requires a showing that there is reason to believe the practitioner
would likely succeed on appeal.
Section 11.58: Section 11.58(e) will continue to permit suspended,
excluded, or resigned practitioners to act as paralegals for other
registered practitioners. The public is adequately protected by requiring
the practitioner to notify all clients he or she represents with immediate
or prospective business before the Office of the disciplinary action and
resulting suspension, exclusion, or resignation. See Sec. 11.58(b)(1)(iii).
The clients include, for example, clients for whom the practitioner has
prepared and filed papers at the Office, clients for whom the practitioner
has been engaged to prepare documents to be filed in the Office but has yet
to file any documents, and clients whom the practitioner has billed for
work performed or to be performed. The public and other affected persons
are adequately protected by precluding the suspended, excluded, or resigned
practitioner from communicating directly with the employing
practitioner's clients, meeting with those clients, or rendering any
legal advice or services to them. Proposed Sec. 11.58(b)(1)(v) has been
revised to provide that the disciplined or resigned practitioner must
relinquish to the client or other practitioner designated by the
client, all funds for practice before the Office, including any legal
fees paid in advance that have not been earned and any advanced costs
not expended. The revision provides operational efficiencies that
enable the client, or the client's new counsel in consultation with the
client, to determine to whom funds should be transferred to enable the
client to pursue his or her legal rights.
Proposed rule 11.58(b), regarding reactivation of practitioners
on disability inactive status, has been eliminated as unnecessary. The
revised proposed sections have limited disability inactive status to
practitioners who are in a disciplinary proceeding and provide
procedures for their reactivation in revised proposed Sec. 11.28(b).
Disability inactive status would be unavailable to practitioners who
are not in a disciplinary proceeding. Accordingly, it is unnecessary to
address reactivation of practitioners in disability inactive status in
Sec. 11.58.
Section 11.59: Section 11.59 has been revised to prove information
dissemination to protect the public from disciplined practitioners.
Section 11.59(a) provides for informing the public of the disposition
of each matter in which public discipline has been imposed and of any
other changes in a practitioner's registration status. Public discipline
is identified as exclusion, including exclusion on consent, suspension,
and public reprimand. In the usual circumstances, the OED Director would
give notice of public discipline and the reasons for the discipline to
disciplinary enforcement agencies in the state where the practitioner is
admitted practice, to courts where the practitioner is known to be
admitted, and the public. The final decision of the USPTO Director would
be published if public discipline is imposed. A redacted version of the
final decision would be published if a private reprimand is imposed.
Changes in status, such as suspended, excluded, or disability inactive
status, would also be published.
Section 11.59(b) has been revised to provide that, but for
records that the USPTO Director orders to be kept confidential, records
of every disciplinary proceeding where a practitioner is reprimanded,
suspended, or excluded will be available to the public upon written
request. An exception is provided to enable the Office to withhold
information as necessary to protect the privacy and commercial
interests of third parties. The record of a proceeding that results in
a practitioner's transfer to disability inactive status would not be
available to the public.
Section 11.60: Section 11.60 has been revised to refer to practitioners
who have been excluded on consent as resigned practitioners and to provide
for their reinstatement.
Section 11.61: Sections 11.61(c) and (d) have been added to the savings
clause to clarify when the specific rule changes would be effective. The
provisions of Secs. 11.24, 11.25, 11.28 and 11.34 through 11.57 would
apply to all proceedings in which the complaint is filed on or after the
effective date of these regulations. Sections 11.26 and 11.27 would apply
to matters pending on or after the effective date of these regulations.
Sections 11.58 through 11.60 would apply to all cases in which an order
of suspension or exclusion is entered or resignation is accepted on or
after the effective date of these regulations.
Classification
Regulatory Flexibility Act: The Deputy General Counsel for General Law,
United States Patent and Trademark Office, certified to the Chief Counsel
for Advocacy, Small Business Administration, that the changes in this
notice of proposed rule making will not have a significant economic impact
on a substantial number of small entities (Regulatory Flexibility Act,
5 U.S.C. 605(b)). The provisions of the Regulatory Flexibility Act relating
to the preparation of an initial flexibility analysis are not applicable to
this rule making because the rules will not have a significant economic
impact on a substantial number of small entities. The primary purpose of
the rule changes is to bring the USPTO's disciplinary procedural rules for
practitioners in line with the American Bar Association Model Rules,
American Bar Association Model Rules for Lawyer Disciplinary Enforcement,
American Bar Association Model Federal Rules of Disciplinary Enforcement
and rules adopted by other federal agencies. This will ease the
practitioners' burden in learning and complying with USPTO regulations.
The rule eliminates a fee of $130 for petitions in disciplinary
cases to enable petitioners to invoke the supervisory authority of the
USPTO Director. The rule does not affect the fee of $130 previously
adopted for petition to the Director of Enrollment and Discipline in
enrollment and registration matters.
The rule imposes a $1600 fee for a petition for reinstatement
for a suspended or excluded practitioner and removes the $1500 cap on
disciplinary proceeding costs that can be assessed against such a
practitioner as a condition of reinstatement. Approximately five of the
30,000 practitioners petition for reinstatement each year, and
approximately two of these petitions occur under circumstances where
disciplinary proceeding costs may be assessed. These changes,
therefore, will not affect a substantial number of practitioners.
Executive Order 13132: This notice of proposed 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 proposed rule making has been
determined to be not significant for purposes of Executive Order 12866
(September 30, 1993).
Paperwork Reduction Act: This supplemental notice of proposed 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 supplemental notice of proposed
rule making contains revisions that the United States Patent and Trademark
Office (USPTO) is proposing to the rules governing the conduct of
professional responsibility investigations and disciplinary proceedings.
The principal impact of the changes in this supplemental notice of proposed
rule making is on registered practitioners. The information collections
involved in this proposed rule have been previously reviewed and
approved by OMB under OMB control numbers 0651-0012 and 0651-0017. The
proposed revisions do not affect the information collection requirements
for 0651-0012 and 0651-0017, so the USPTO is not resubmitting these
collections to OMB for review and approval.
The title, description, and respondent description of the
currently approved information collections for 0651-0012 and 0651-0017
are shown below with estimates of the annual reporting burdens.
Included in the estimates is the time for reviewing instructions,
gathering and maintaining the data needed, and completing and reviewing
the collection of information.
OMB Number: 0651- 0012
Title: Admittance to Practice and Roster of Registered Patent Attorneys
and Agents Admitted to Practice Before the Patent and Trademark Office
(USPTO).
Form Numbers: PTO-158, PTO-158A, PTO/275, PTO-107A, and PTO-1209.
Type of Review: Approved through March of 2007.
Affected Public: Individuals or households, businesses or other
for-profit, Federal Government, and state, local, or tribal governments.
Estimated Number of Respondents: 20,231.
Estimated Time Per Response: 10 minutes to 40 hours.
Estimated Total Annual Burden Hours: 46,567 hours.
Needs and Uses: The public uses the forms in this collection 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.
OMB Number: 0651- 0017
Title: Practitioner Records Maintenance, Disclosure, and Discipline
Before the United States Patent and Trademark Office (USPTO). Form
Numbers: None.
Type of Review: Approved through July of 2007.
Affected Public: Individuals or households, businesses or other
for-profit, Federal Government, and state, local, or tribal
governments.
Estimated Number of Respondents: 582.
Estimated Time Per Response: 5 minutes to 60 hours.
Estimated Total Annual Burden Hours: 8,334 hours.
Needs and Uses: The information in this collection is necessary for the
United States Patent and Trademark Office to comply with Federal
regulations, 35 U.S.C. 6(a) and 35 U.S.C. 31. The Office of Enrollment
and Discipline collects this information to insure compliance with the
USPTO Code of Professional Responsibility, 37 CFR 10.20-10.112. This
Code requires that registered practitioners maintain complete records
of clients, including all funds, securities, and other properties of
clients coming into his/her possession, and render appropriate accounts
to the client regarding such records, as well as report violations of
the Code to the USPTO. The registered practitioners are mandated by the
Code to maintain proper documentation so that they can fully cooperate
with an investigation in the event of a report of an alleged violation
and so that violations are prosecuted as appropriate.
Comments are 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 are requested to send comments regarding
these information collections, including suggestions for reducing this
burden, to Harry I. Moatz, Director of Enrollment and Discipline, Mail
Stop OED-Ethics Rules, U.S. Patent and Trademark Office, P.O. Box 1450,
Alexandria, Virginia 22313-1450, or to the Office of Information and
Regulatory Affairs, Office of Management and Budget, New Executive
Office Building, Room 10202, 725 17th Street, N.W., Washington, D.C.
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 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 proposes to amend 37 CFR Part 11 as follows:
PART 11 - REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT AND
TRADEMARK OFFICE
1. The authority citation for 37 CFR Part 11 would continue to read as
follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2), 32.
2. Section 11.1 is amended to add the definition of State as follows:
Sec. 11.1 Definitions
*****
State means any of the 50 states of the United States of America, the
District of Columbia, and any Commonwealth or territory of the United
States of America.
*****
3. Section 11.2 is amended to revise paragraphs (a), (b)(4), (c) and (d)
and add paragraphs (b)(5), (b)(6) and (e) to read as follows:
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 a
vacancy in the office of the OED Director, the USPTO Director may designate
an employee of the Office to serve as acting OED Director. The OED Director
shall be an active member in good standing of the bar of a State.
(b) ***
(4) Conduct investigations of matters involving possible
grounds for discipline of practitioners coming to the attention of the
OED Director. Except in matters meriting summary dismissal, no
disposition shall be recommended or undertaken by the OED Director
until the accused practitioner shall have been afforded an opportunity
to respond to a reasonable inquiry by the OED Director.
(5) With the consent of a panel of three members of the Committee on
Discipline, initiate disciplinary proceedings under Sec. 11.32 and perform
such other duties in connection with investigations and disciplinary
proceedings as may be necessary.
(6) Oversee the preliminary screening of information and close
investigations as provided for in Sec. 11.22.
(c) Petition to OED Director regarding enrollment or recognition. Any
petition from any action or requirement of the staff of OED reporting to
the OED Director shall be taken to the OED Director accompanied by payment
of the fee set forth in Sec. 1.21(a)(5)(i). 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 neither stay the period for taking other action which may be running,
nor 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 regarding enrollment or
recognition. A party dissatisfied with a final decision of the OED Director
regarding enrollment or recognition 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). Any such petition to the USPTO Director waives a
right to seek reconsideration from the OED Director. Any petition not filed
within thirty days after the final decision of the OED Director may be
dismissed as untimely. Briefs or memoranda, if any, in support of the
petition shall accompany the petition. The petition will be decided on
the basis of the record made before the OED Director. The USPTO
Director in deciding the petition will consider no new evidence. Copies
of documents already of record before the OED Director shall not be
submitted with the petition. An oral hearing will not be granted except
when considered necessary by the USPTO Director. Any request for
reconsideration of the decision of the USPTO Director may be dismissed
as untimely if not filed within thirty days after the date of said
decision.
(e) Petition to USPTO Director in disciplinary matters. Petition may
be taken to the USPTO Director to invoke the supervisory authority of the
USPTO Director in appropriate circumstances in disciplinary matters. Any
such petition must contain a statement of the facts involved and the point
or points to be reviewed and the action requested. Briefs or memoranda, if
any, in support of the petition must accompany the petition. Where facts
are to be proven, the proof in the form of affidavits or declarations
(and exhibits, if any) must accompany the petition. The OED Director may
be directed by the USPTO Director to file a reply to the petition,
supplying a copy to the petitioner. An oral hearing will not be granted
except when considered necessary by the USPTO Director. The mere filing
of a petition will not stay an investigation, disciplinary proceeding or
other proceedings. Any petition under this part not filed within thirty
days of the mailing date of the action or notice from which relief is
requested may be dismissed as untimely. Any request for reconsideration
of the decision of the USPTO Director may be dismissed as untimely if
not filed within thirty days after the date of said decision.
4. Section 11.3 is revised to read as follows:
Sec. 11.3 Suspension of rules.
(a) Except as provided in paragraph (b) of this section, 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 by any party, including
the OED Director or the OED Director's representative, subject to such
other requirements as may be imposed.
(b) No petition under this section shall stay a disciplinary
proceeding unless ordered by the USPTO Director or a hearing officer.
Subpart B - RECOGNITION TO PRACTICE BEFORE THE USPTO
5. Section 11.5 is revised to read as followes:
Sec. 11.5 Register of attorneys and agents in patent matters; practice
before the Office.
(a) 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.
(b) Practice before the Office. Practice before the Office includes,
but is not limited to, law-related service that comprehends any matter
connected with the presentation to the Office or any of its officers or
employees relating to a client's rights, privileges, duties, or
responsibilities under the laws or regulations administered by the Office
for the grant of a patent or registration of a trademark, or for enrollment
or disciplinary matters. Such presentations include preparing necessary
documents in contemplation of filing the documents with the Office,
corresponding and communicating with the Office, and representing a client
through documents or at interviews, hearings, and meetings, as well as
communicating with and advising a client concerning matters pending or
contemplated to be presented before the Office. Nothing in this section
proscribes a practitioner from employing non-practitioner assistants under
the supervision of the practitioner to assist the practitioner in
preparation of said presentations.
(1) Practice before the Office in patent matters. Practice before the
Office in patent matters includes, but is not limited to, preparing and
prosecuting any patent application, consulting with or giving advice to a
client in contemplation of filing a patent application or other document
with the Office, considering the advisability of relying upon alternative
forms of protection that may be available under State law, drafting the
specification or claims of a patent application; drafting an amendment or
reply to a communication from the Office that may require written argument
to establish the patentability of a claimed invention; drafting a reply to
a communication from the Office regarding a patent application, and
drafting a communication for a public use, interference, reexamination
proceeding, petition, appeal to the Board of Patent Appeals and
Interferences, or other proceeding.
(2) Practice before the Office in trademark matters. Practice before
the Office in trademark matters includes, but is not limited to, consulting
with or giving advice to a client in contemplation of filing a trademark
registration application or other document with the Office; preparing and
prosecuting an application for trademark registration; preparing an
amendment which may require written argument to establish the
registrability of the mark; and conducting an opposition, cancellation,
or concurrent use proceeding; or conducting an appeal to the Trademark
Trial and Appeal Board.
6. Sections 11.14 through 11.18 are added to read as follows:
Sec. 11.14 Individuals who may practice before the Office in trademark
and other non-patent matters.
(a) Attorneys. Any individual who is an attorney may represent others
before the Office in trademark and other non-patent matters. An attorney
is not required to apply for registration or recognition to practice before
the Office in trademark and other non- patent matters. Registration as a
patent attorney does not itself entitle an individual to practice before
the Office in trademark matters.
(b) Non-lawyers. Individuals who are not attorneys are not recognized
to practice before the Office in trademark and other non-patent matters,
except that individuals not attorneys who were recognized to practice
before the Office in trademark matters under this chapter prior to
January 1, 1957, will be recognized as agents to continue practice before
the Office in trademark matters. Except as provided in the preceding
sentence, registration as a patent agent does not itself entitle an
individual to practice before the Office in trademark matters.
(c) Foreigners. Any foreign attorney or agent not a resident of the
United States who shall file a written application for reciprocal
recognition under paragraph (f) of this section and prove to the
satisfaction of the OED Director that he or she is registered or in
good standing before the patent or trademark office of the country in
which he or she resides and practices and is possessed of good moral
character and reputation, may be recognized for the limited purpose of
representing parties located in such country before the Office in the
presentation and prosecution of trademark matters, provided: the patent
or trademark office of such country allows substantially reciprocal
privileges to those permitted to practice in trademark matters before
the Office. Recognition under this paragraph shall continue only during
the period that the conditions specified in this paragraph obtain.
(d) Recognition of any individual under this section shall not
be construed as sanctioning or authorizing the performance of any act
regarded in the jurisdiction where performed as the unauthorized
practice of law.
(e) No individual other than those specified in paragraphs (a),
(b), and (c) of this section will be permitted to practice before the
Office in trademark matters on behalf of a client. Any individual may
appear in a trademark or other non-patent matter in his or her own
behalf. Any individual may appear in a trademark matter for:
(1) A firm of which he or she is a member,
(2) A partnership of which he or she is a partner, or
(3) A corporation or association of which he or she is an
officer and which he or she is authorized to represent, if such firm,
partnership, corporation, or association is a party to a trademark
proceeding pending before the Office
(f) Application for reciprocal recognition. An individual seeking
reciprocal recognition under paragraph (c) of this section, in addition
to providing evidence satisfying the provisions of paragraph (c) of this
section, shall apply in writing to the OED Director for reciprocal
recognition, and shall pay the application fee required by
Sec. 1.21(a)(1)(i) of this subchapter.
Sec. 11.15 Refusal to recognize a practitioner.
Any practitioner authorized to appear before the Office may be
suspended, excluded, or reprimanded in accordance with the provisions
of this Part. Any practitioner who is suspended or excluded under this
Part shall not be entitled to practice before the Office in patent,
trademark, or other non-patent matters while suspended or excluded.
Sec. 11.16-11.17 [Reserved]
Sec. 11.18 Signature and certificate for correspondence filed in the Office.
(a) For all documents filed in the Office in patent, trademark,
and other non-patent matters, and all documents filed with a hearing
officer in a disciplinary proceeding, except for correspondence that is
required to be signed by the applicant or party, each piece of
correspondence filed by a practitioner in the Office must bear a
signature, personally signed by such practitioner, in compliance with
Sec. 1.4(d)(1) of this subchapter.
(b) By presenting to the Office or hearing officer in a
disciplinary proceeding (whether by signing, filing, submitting, or
later advocating) any paper, the party presenting such paper, whether a
practitioner or non-practitioner, is certifying that-
(1) All statements made therein of the party's own knowledge
are true, all statements made therein on information and belief are
believed to be true, and all statements made therein are made with the
knowledge that whoever, in any matter within the jurisdiction of the
Office, knowingly and willfully falsifies, conceals, or covers up by
any trick, scheme, or device a material fact, or knowingly and
willfully makes any false, fictitious, or fraudulent statements or
representations, or knowingly and willfully makes or uses any false
writing or document knowing the same to contain any false, fictitious,
or fraudulent statement or entry, shall be subject to the penalties set
forth under 18 U.S.C. 1001 and any other applicable criminal statute,
and violations of the provisions of this section may jeopardize the
probative value of the paper; and
(2) To the best of the party's knowledge, information and
belief, formed after an inquiry reasonable under the circumstances,
(i) The paper is not being presented for any improper purpose,
such as to harass someone or to cause unnecessary delay or needless
increase in the cost of any proceeding before the Office;
(ii) The other legal contentions therein are warranted by existing law
or by a nonfrivolous argument for the extension, modification, or reversal
of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have
evidentiary support or, if specifically so identified, are likely to
have evidentiary support after a reasonable opportunity for further
investigation or discovery; and
(iv) The denials of factual contentions are warranted on the
evidence, or if specifically so identified, are reasonably based on a
lack of information or belief.
(c) Violations of any of paragraphs (b)(2)(i) through (iv) of
this section are, after notice and reasonable opportunity to respond,
subject to such sanctions or actions as deemed appropriate by the USPTO
Director, which may include, but are not limited to, any combination
of-
(1) Striking the offending paper;
(2) Referring a practitioner's conduct to the Director of Enrollment
and Discipline for appropriate action;
(3) Precluding a party or practitioner from submitting a paper,
or presenting or contesting an issue;
(4) Affecting the weight given to the offending paper;
(5) Requiring a terminal disclaimer or reducing the term of a patent for
a period equal to the period the offending paper is advocated; or
(6) Terminating the proceedings in the Office.
(d) Any practitioner violating the provisions of this section may also
be subject to disciplinary action.
7. Part 11 is amended to add Subpart C to read as follows:
Subpart C - INVESTIGATIONS AND DISCIPLINARY PROCEEDINGS
JURISDICTION, SANCTIONS, INVESTIGATIONS, AND PROCEEDINGS
11.19 Disciplinary jurisdiction.
11.20 Disciplinary sanctions.
11.21 Warnings.
11.22 Investigations.
11.23 Committee on Discipline.
11.24 Reciprocal discipline.
11.25 Interim suspension and discipline based upon conviction of committing
a serious crime.
11.26 Settlement.
11.27 Exclusion on consent.
11.28 Incompetent and incapacitated practitioners in a disciplinary
proceeding.
11.29-11.31 [Reserved]
11.32 Initiating a disciplinary proceeding.
11.33 [Reserved]
11.34 Complaint.
11.35 Service of complaint.
11.36 Answer to complaint.
11.37 [Reserved]
11.38 Contested case.
11.39 Hearing officer; appointment; responsibilities; review of
interlocutory orders; stays.
11.40 Representative for OED Director or respondent.
11.41 Filing of papers.
11.42 Service of papers.
11.43 Motions.
11.44 Hearings.
11.45 Amendment of pleadings.
11.46-11.48 [Reserved]
11.49 Burden of proof.
11.50 Evidence.
11.51 Depositions.
11.52 Discovery.
11.53 Proposed findings and conclusions; post-hearing memorandum.
11.54 Initial decision of hearing officer.
11.55 Appeal to the USPTO Director.
11.56 Decision of the USPTO Director.
11.57 Review of final decision of the USPTO Director.
11.58 Duties of disciplined or resigned practitioner.
11.59 Dissemination of disciplinary and other information.
11.60 Petition for reinstatement.
11.61 Savings clause.
11.62-11.99 [Reserved]
Sec. 11.19 Disciplinary jurisdiction.
(a) All practitioners engaged in practice before the Office;
all practitioners administratively suspended under Sec. 11.11(b); all
practitioners registered to practice before the Office in patent cases;
all practitioners inactivated under Sec. 11.11(c); all practitioners
authorized under Sec. 11.6(d) to take testimony; and all practitioners
reprimanded, suspended, or excluded from the practice of law by a duly
constituted authority, including by the USPTO Director, are subject to
the disciplinary jurisdiction of the Office. Practitioners who have
resigned under Sec. 11.11(e) shall also be subject to such jurisdiction
with respect to conduct undertaken prior to the resignation and conduct
in regard to any practice before the Office following the resignation.
(b) Grounds for discipline. The following, whether
done individually by a practitioner or in concert with any other person
or persons and whether or not done in the course of providing legal
services to a client, or in a matter pending before the Office,
constitute grounds for discipline. Grounds for discipline include:
(1) Conviction of a serious crime;
(2) Discipline on ethical grounds imposed in another jurisdiction or
disciplinary disqualification from participating in or appearing before
any Federal program or agency;
(3) Failure to comply with any order of a Court disciplining a
practitioner, or any final decision of the USPTO Director in a
disciplinary matter;
(4) Violation of the imperative USPTO Rules of Professional Conduct; or
(5) Violation of the oath or declaration taken by the practitioner.
See Sec. 11.8.
(c) Petitions to disqualify a practitioner in ex parte or inter partes
matters in the Office are not governed by Secs. 11.19 through 11.806 and
will be handled on a case-by-case basis under such conditions as the USPTO
Director deems appropriate.
(d) The OED Director may refer the existence of circumstances suggesting
unauthorized practice of law to the authorities in the appropriate
jurisdiction(s).
Sec. 11.20 Disciplinary sanctions.
(a) Types of discipline. The USPTO Director, after
notice and opportunity for a hearing, and where grounds for discipline
exist, may impose on a practitioner the following types of discipline:
(1) Exclusion from practice before the Office;
(2) Suspension from practice before the Office for an appropriate period
of time;
(3) Reprimand; or
(4) Probation. Probation may be imposed in lieu of or in addition to any
other disciplinary sanction. Any conditions of probation shall be stated in
writing in the order imposing probation. The order shall also state whether,
and to what extent, the practitioner shall be required to notify clients of
the probation. The order shall establish procedures for the supervision of
probation. Violation of any condition of probation shall be cause for the
probation to be revoked, and the disciplinary sanction to be imposed
for the remainder of the probation period. Revocation of probation
shall occur only after an order to show cause why probation should not
be revoked is resolved adversely to the practitioner.
(b) Conditions imposed with discipline. When the
USPTO Director imposes discipline, the practitioner may be required to
make restitution either to persons financially injured by the
practitioner's conduct or to an appropriate client's security trust
fund, or both, as a condition of probation or of reinstatement. Such
restitution shall be limited to the return of unearned practitioner
fees or misappropriated client funds. Any other reasonable condition
may also be imposed, including a requirement that the practitioner take
and pass a professional responsibility examination.
Sec. 11.21 Warnings.
A warning is not a disciplinary sanction. The OED Director may
conclude an investigation with the issuance of a warning. The warning
shall contain a brief statement of facts and imperative USPTO Rules of
Professional Conduct relevant to the facts.
Sec. 11.22 Investigations.
(a) The OED Director is authorized to investigate possible
grounds for discipline. An investigation may be initiated when the OED
Director receives a grievance, information or evidence from any source
suggesting possible grounds for discipline. Neither unwillingness nor
neglect by a grievant to prosecute a charge, nor settlement,
compromise, or restitution with the grievant, shall in itself justify
abatement of an investigation.
(b) Any person possessing information or evidence concerning
possible grounds for discipline of a practitioner may report the
information or evidence to the OED Director. The OED Director may
request that the report be presented in the form of an affidavit or
declaration.
(c) Information or evidence coming from any source which
presents or alleges facts suggesting possible grounds for discipline of
a practitioner will be deemed a grievance.
(d) Preliminary screening of information or evidence. The OED Director
shall examine all information or evidence concerning possible grounds for
discipline of a practitioner.
(e) Notification of investigation. The OED Director
shall notify the practitioner in writing of the initiation of an
investigation into whether a practitioner has engaged in conduct
constituting possible grounds for discipline.
(f) Request for information and evidence by OED Director. (1)
In the course of the investigation, the OED Director may request
information and evidence regarding possible grounds for discipline of a
practitioner from:
(i) The grievant,
(ii) The practitioner, or
(iii) Any person who may reasonably be expected to provide
information and evidence needed in connection with the grievance or
investigation.
(2) The OED Director may request information and evidence
regarding possible grounds for discipline of a practitioner from a
non-grieving client either after obtaining the consent of the
practitioner or upon a finding by a Contact Member of the Committee on
Discipline, appointed in accordance with Sec. 11.23(d), that good cause
exists to believe that the possible ground for discipline alleged has
occurred with respect to non-grieving clients. Neither a request for,
nor disclosure of, such information shall constitute a violation of any
of the Rules of Professional Conduct contained in Secs. 11.100 et seq.
(g) Disposition of investigation. Upon the conclusion of an
investigation, the OED Director may:
(1) Close the investigation without issuing a warning, or
taking disciplinary action;
(2) Issue a warning to the practitioner;
(3) Institute formal charges upon the approval of the Committee
on Discipline; or
(4) Enter into a settlement agreement with the practitioner and
submit the same for approval of the USPTO Director.
(h) Closing investigation without issuing a warning or
taking disciplinary action. The OED Director shall terminate an
investigation and decline to refer a matter to the Committee on
Discipline if the OED Director determines that:
(1) The information or evidence is unfounded;
(2) The information or evidence relates to matters not within
the jurisdiction of the Office;
(3) As a matter of law, the conduct about which information or
evidence has been obtained does not constitute grounds for discipline,
even if the conduct may involve a legal dispute; or
(4) The available evidence is insufficient to conclude that
there is probable cause to believe that grounds exist for discipline.
Sec. 11.23 Committee on Discipline.
(a) The USPTO Director shall appoint a Committee on Discipline.
The Committee on Discipline shall consist of at least three employees
of the Office. None of the Committee members shall report directly or
indirectly to the OED Director or any employee designated by the USPTO
Director to decide disciplinary matters. Each Committee member shall be
a member in good standing of the bar of the highest court of a State.
The Committee members shall select a Chairperson from among themselves.
Three Committee members will constitute a panel of the Committee.
(b) Powers and duties of the Committee on Discipline. The Committee
shall have the power and duty to:
(1) Meet in panels at the request of the OED Director and,
after reviewing evidence presented by the OED Director, by majority
vote of the panel, determine whether there is probable cause to bring
charges under Sec. 11.32 against a practitioner; and
(2) Prepare and forward its own probable cause findings and
recommendations to the OED Director.
(c) No discovery shall be authorized of, and no member of the
Committee on Discipline shall be required to testify about
deliberations of, the Committee on Discipline or of any panel.
(d) The Chairperson shall appoint the members of the panels and
a Contact Member of the Committee on Discipline.
Sec. 11.24 Reciprocal discipline.
(a) Notification of OED Director. Within thirty
days of being disbarred or suspended by another jurisdiction, or being
disciplinarily disqualified from participating in or appearing before
any Federal program or agency, a practitioner subject to the
disciplinary jurisdiction of the Office shall notify the OED Director
in writing of the same. A practitioner is deemed to be disbarred if he
or she is disbarred, excluded on consent, or has resigned in lieu of a
disciplinary proceeding. Upon receiving notification from any source or
otherwise learning that a practitioner subject to the disciplinary
jurisdiction of the Office has been so disciplined or disciplinarily
disqualified, the OED Director shall obtain a certified copy of the
record or order regarding the disbarment, suspension, or disciplinary
disqualification and file the same with the USPTO Director. The OED
Director shall, in addition, without Committee on Discipline
authorization, file with the USPTO Director a complaint complying with
Sec. 11.34 against the practitioner predicated upon the disbarment,
suspension, or disciplinary disqualification. The OED Director shall
request the USPTO Director to issue a notice and order as set forth in
paragraph (b) of this section.
(b) Notification served on practitioner. Upon receipt of a certified
copy of the record or order regarding the practitioner being so disciplined
or disciplinarily disqualified together with the complaint, the USPTO
Director shall forthwith issue a notice directed to the practitioner in
accordance with Sec. 11.35 and to the OED Director containing:
(1) A copy of the record or order regarding the disbarment,
suspension, or disciplinary disqualification;
(2) A copy of the complaint; and
(3) An order directing the practitioner to inform the USPTO
Director, within forty days of the date of the notice, of:
(i) Any argument that the practitioner was not disbarred,
suspended, or disciplinarily disqualified; and
(ii) Any claim by the practitioner, predicated upon the grounds
set forth in paragraphs (d)(1)(i) through (d)(1)(iii) of this section,
that the imposition of the identical discipline would be unwarranted
and the reasons for that claim.
(c) Effect of Stay in Another Jurisdiction. In the event the discipline
imposed by another jurisdiction or disciplinary disqualification imposed
in the Federal program or agency has been stayed, any reciprocal discipline
imposed by the USPTO may be deferred until the stay expires.
(d) Hearing and discipline to be imposed. (1) The USPTO Director shall
hear the matter on the documentary record unless the USPTO Director
determines that an oral hearing is necessary. After expiration of the forty
days from the date of the notice pursuant to provisions of paragraph (b) of
this section, the USPTO Director shall consider any timely filed response
and impose the identical discipline unless the practitioner or OED Director
clearly and convincingly demonstrates, or the USPTO Director finds, that it
clearly appears upon the face of the record from which the discipline is
predicated, that:
(i) The procedure elsewhere was so lacking in notice or
opportunity to be heard as to constitute a deprivation of due process;
(ii) There was such infirmity of proof establishing the conduct
as to give rise to the clear conviction that the Office could not,
consistently with its duty, accept as final the conclusion on that
subject; or
(iii) The imposition of the same discipline by the Office would
result in grave injustice.
(2) If the USPTO Director determines that any of the elements
of paragraphs (d)(1)(i) through (d)(1)(iii) of this section exist, the
USPTO Director shall enter an appropriate order.
(e) Conclusiveness of adjudication in another
jurisdiction or Federal agency or program. In all other respects,
a final adjudication in another jurisdiction or Federal agency or
program that a practitioner, whether or not admitted in that
jurisdiction, has been guilty of misconduct shall establish
conclusively the ground for discipline for purposes of a disciplinary
proceeding in this Office.
(f) Reciprocal discipline - action where practice has
ceased. Upon request by the practitioner, reciprocal discipline
may be imposed nunc pro tunc only if the practitioner
promptly notified the OED Director of his or her discipline or
disciplinary disqualification in another jurisdiction, and establishes
by clear and convincing evidence that the practitioner voluntarily
ceased all activities related to practice before the Office and
complied with all provisions of Sec. 11.58. The effective date of any
suspension or disbarment imposed nunc pro tunc shall be the
date the practitioner voluntarily ceased all activities related to
practice before the Office and complied with all provisions of Sec. 11.58.
(g) Reinstatement following reciprocal discipline
proceeding. A practitioner may petition for reinstatement under
conditions set forth in Sec. 11.60 no sooner than completion of the
period of reciprocal discipline imposed, and compliance with all
provisions of Sec. 11.58.
Sec. 11.25 Interim suspension and discipline based upon conviction of
committing a serious crime.
(a) Notification of OED Director. Upon being convicted of a crime in a
court of the United States, any State, or a foreign country, a practitioner
subject to the disciplinary jurisdiction of the Office shall notify the OED
Director in writing of the same within thirty days from the date of such
conviction. Upon being advised or learning that a practitioner subject to
the disciplinary jurisdiction of the Office has been convicted of a crime,
the OED Director shall make a preliminary determination whether the
crime constitutes a serious crime warranting immediate interim
suspension. If the crime is a serious crime, the OED Director shall
file with the USPTO Director proof of the conviction and request the
USPTO Director to issue a notice and order set forth in paragraph
(b)(2) of this section. The OED Director shall in addition, without
Committee on Discipline authorization, file with the USPTO Director a
complaint against the practitioner complying with Sec. 11.34 predicated
upon the conviction of a serious crime. If the crime is not a serious
crime, the OED Director shall process the matter in the same manner as
any other information or evidence of a possible violation of an
imperative Rule of Professional Conduct coming to the attention of the
OED Director.
(b) Immediate interim suspension and referral for disciplinary
proceeding. All proceedings under this section shall be handled as
expediously as possible.
(1) The USPTO Director has authority to place a practitioner on
interim suspension. The USPTO Director may refer any portion of the
interim suspension proceeding to a hearing officer with appropriate
directions.
(2) Notification served on practitioner. Upon
receipt of a certified copy of the court record, docket entry or
judgment demonstrating that the practitioner has been so convicted
together with the complaint, the USPTO Director shall forthwith issue a
notice directed to the practitioner in accordance with Sec. 11.35(a), (b)
or (c), and to the OED Director, containing:
(i) A copy of the court record, docket entry, or judgment of conviction;
(ii) A copy of the complaint; and
(iii) An order directing the practitioner to inform the USPTO
Director, within forty days of the date of the notice, of any predicate
challenge establishing that interim suspension may not properly be
ordered, such as the crime did not constitute a serious crime or that
the practitioner is not the individual found guilty.
(3) Hearing and interim suspension. The matter
shall be heard on the documentary record for the order for interim
suspension and the practitioner's assertion of any predicate challenge.
(i) Interim Suspension. The USPTO Director shall
place a practitioner on interim suspension immediately upon proof that
the practitioner has been convicted of a serious crime, regardless of
the pendency of any appeal.
(ii) Termination. The USPTO Director has authority to terminate an
interim suspension. In the interest of justice, the USPTO Director may
terminate an interim suspension at any time upon a showing of extraordinary
circumstances, after affording the OED Director an opportunity to respond
to the request to terminate interim suspension.
(4) Referral for disciplinary proceeding. Upon
entering an order of interim suspension, the USPTO Director shall refer
the matter to the OED Director for institution of a formal disciplinary
proceeding. A disciplinary proceeding so instituted shall be stayed by
the hearing officer until all direct appeals from the conviction are
concluded. Review of the initial decision of the hearing officer shall
be pursuant to Sec. 11.55.
(c) Proof of conviction and guilt. (1) Conviction in the United States.
For purposes of a hearing for interim suspension and a hearing on the formal
charges in a complaint filed as a consequence of the conviction, a certified
copy of the court record, docket entry, or judgment of conviction in a court
of the United States or any State shall be conclusive evidence that the
practitioner committed the crime and was convicted. The sole issue before
the hearing officer shall be the nature and extent of the discipline to be
imposed as a consequence of the conviction.
(2) Conviction in a foreign country. For purposes
of a hearing for interim suspension and on the formal charges filed as
a result of a finding of guilt, a certified copy of the court record,
docket entry, or judgment of conviction in a court of a foreign country
shall be conclusive evidence of the conviction and of any imposed
confinement or commitment to imprisonment, and prima facie
evidence of the practitioner's commission of the crime of which the
practitioner has been convicted. However, nothing in this paragraph
shall preclude the practitioner from demonstrating in any hearing by
clear and convincing evidence:
(i) That the procedure in the foreign country was so lacking in
notice or opportunity to be heard as to constitute a deprivation of due
process and rebut the prima facie evidence of guilt; or
(ii) Material facts to be considered when determining if a
serious crime was committed and whether a disciplinary sanction should
be entered.
(d) Crime determined not to be serious crime. If
the USPTO Director determines that the crime is not a serious crime,
the matter shall be referred to the OED Director for investigation
under Sec. 11.22 and processing as is appropriate.
(e) Reinstatement. (1) Upon reversal or setting aside a finding of guilt
or a conviction. If a practitioner suspended solely under the provisions of
paragraph (b) of this section demonstrates that the underlying finding of
guilt or conviction of serious crimes has been reversed or vacated, the
order for interim suspension shall be vacated and the practitioner be
placed on active status unless the finding of guilt was reversed or the
conviction was set aside with respect to less than all serious crimes
for which the practitioner was found guilty or convicted. The vacating
of the interim suspension will not terminate any other disciplinary
proceeding then pending against the practitioner, the disposition of
which shall be determined by the hearing officer before whom the matter
is pending, on the basis of all available evidence other than the
finding of guilt or conviction.
(2) Following conviction of a serious crime. Any
practitioner convicted of a serious crime and disciplined in whole or
in part in regard to that conviction, may petition for reinstatement
under conditions set forth in Sec. 11.60 no sooner than five years after
being discharged following completion of service of his or her
sentence, or after completion of service under probation or parole,
whichever is later.
(f) Notice to clients and others of interim
suspension. An interim suspension under this section shall
constitute a suspension of the practitioner for the purpose of Sec. 11.58.
Sec. 11.26 Settlement.
Before or after a complaint under Sec. 11.24 is filed, a
settlement conference may occur between the OED Director and the
practitioner. Any offers of compromise and any statements made during
the course of settlement discussions shall not be admissible in
subsequent proceedings. The OED Director may recommend to the USPTO
Director any settlement terms deemed appropriate, including steps taken
to correct or mitigate the matter forming the basis of the action, or
to prevent recurrence of the same or similar conduct. A settlement
agreement shall be effective only upon entry of a final decision by the
USPTO Director.
Sec. 11.27 Exclusion on consent.
(a) Required affidavit. The OED Director may confer
with a practitioner concerning possible violations by the practitioner
of the Rules of Professional Conduct whether or not a disciplinary
proceeding has been instituted. A practitioner who is the subject of an
investigation or a pending disciplinary proceeding based on allegations
of grounds for discipline, and who desires to resign, may only do so by
consenting to exclusion and delivering to the OED Director an affidavit
declaring the consent of the practitioner to exclusion and stating:
(1) That the practitioner's consent is freely and voluntarily
rendered, that the practitioner is not being subjected to coercion or
duress, and that the practitioner is fully aware of the implications of
consenting to exclusion;
(2) That the practitioner is aware that there is currently
pending an investigation into, or a proceeding involving allegations of
misconduct, the nature of which shall be specifically set forth in the
affidavit to the satisfaction of the OED Director;
(3) That the practitioner acknowledges that, if and when he or
she applies for reinstatement under Sec. 11.60, the OED Director will
conclusively presume, for the limited purpose of determining the
application for reinstatement, that:
(i) The facts upon which the investigation or complaint is based are
true, and
(ii) The practitioner could not have successfully defended
himself or herself against the allegations in the investigation or
charges in the complaint.
(b) Action by the USPTO Director. Upon receipt of
the required affidavit, the OED Director shall file the affidavit and
any related papers with the USPTO Director for review and approval.
Upon such approval, the USPTO Director will enter an order excluding
the practitioner on consent and providing other appropriate actions.
Upon entry of the order, the excluded practitioner shall comply with
the requirements set forth in Sec. 11.58.
(c) When an affidavit under paragraph (a) of this section is
received after a complaint under Sec. 11.34 has been filed, the OED
Director shall notify the hearing officer. The hearing officer shall
enter an order transferring the disciplinary proceeding to the USPTO
Director, who may enter an order excluding the practitioner on consent.
(d) Reinstatement. Any practitioner excluded on
consent under this section may not petition for reinstatement for five
years. A practitioner excluded on consent who intends to reapply for
admission to practice before the Office must comply with the provisions
of Sec. 11.58, and apply for reinstatement in accordance with Sec. 11.60.
Failure to comply with the provisions of Sec. 11.58 constitutes grounds
for denying an application for reinstatement.
Sec. 11.28 Incapacitated practitioners in a disciplinary proceeding.
(a) Holding in abeyance a disciplinary proceeding because
of incapacitation due to a current disability or addiction. (1)
Practitioner's motion. In the course of a disciplinary
proceeding under Sec. 11.32, but before the date set by the hearing
officer for a hearing, the practitioner may file a motion requesting
the hearing officer to enter an order holding such proceeding in
abeyance based on the contention that the practitioner is suffering
from a disability or addiction that makes it impossible for the
practitioner to adequately defend the charges in the disciplinary
proceeding.
(i) Content of practitioner's motion. The practitioner's motion shall,
in addition to any other requirement of Sec. 11.43, include or have
attached thereto:
(A) A brief statement of all material facts;
(B) Affidavits, medical reports, official records, or other
documents setting forth or establishing any of the material facts on
which the practitioner is relying;
(C) A statement that the practitioner acknowledges the alleged
incapacity by reason of disability or addiction;
(D) Written consent that the practitioner be transferred to
disability inactive status if the motion is granted; and
(E) A written agreement by the practitioner to not practice
before the Office in patent, trademark or other non-patent cases while
on disability inactive status.
(ii) Response. The OED Director's response to any
motion hereunder shall be served and filed within fourteen days after
service of the practitioner's motion unless such time is shortened or
enlarged by the hearing officer for good cause shown, and shall set
forth the following:
(A) All objections, if any, to the actions requested in the motion;
(B) An admission, denial or allegation of lack of knowledge
with respect to each of the material facts in the practitioner's motion
and accompanying documents; and
(C) Affidavits, medical reports, official records, or other
documents setting forth facts on which the OED Director intends to rely
for purposes of disputing or denying any material fact set forth in the
practitioner's papers.
(2) Disposition of practitioner's motion. The hearing officer shall
decide the motion and any response thereto. The motion shall be granted
upon a showing of good cause to believe the practitioner to be incapacitated
as alleged. If the required showing is made, the hearing officer shall enter
an order holding the disciplinary proceeding in abeyance. In the case of
addiction to drugs or intoxicants, the order may provide that the
practitioner will not be returned to active status absent satisfaction of
specified conditions. Upon receipt of the order, the OED Director shall
place the practitioner on disability inactive status, give notice to the
practitioner, cause notice to be published, and give notice to
appropriate authorities in the Office that the practitioner has been
placed on disability inactive status. The practitioner shall comply
with the provisions of Sec. 11.58, and shall not engage in practice
before the Office in patent, trademark and other non-patent law until
a determination is made of the practitioner's capability to resume
practice before the Office in a proceeding under paragraph (c) or
paragraph (d) of this section.
(b) Motion for reactivation. Any practitioner transferred to disability
inactive status in a disciplinary proceeding may file with the hearing
officer a motion for reactivation once a year beginning at any time not
less than one year after the initial effective date of inactivation, or
once during any shorter interval provided by the order issued pursuant to
paragraph (a)(2) of this section or any modification thereof. If the motion
is granted, the disciplinary proceeding shall resume under such schedule as
may be established by the hearing officer.
(c) Contents of motion for reactivation. A motion by the practitioner
for reactivation alleging that a practitioner has recovered from a prior
disability or addiction shall be accompanied by all available medical
reports or similar documents relating thereto. The hearing officer may
require the practitioner to present such other information as is necessary.
(d) OED Director's motion to resume disciplinary
proceeding held in abeyance. (1) The OED Director, having good
cause to believe a practitioner is no longer incapacitated, may file a
motion requesting the hearing officer to terminate a prior order
holding in abeyance any pending proceeding because of the
practitioner's disability or addiction. The hearing officer shall
decide the matter presented by the OED Director's motion hereunder
based on the affidavits and other admissible evidence attached to the
OED Director's motion and the practitioner's response. The OED Director
bears the burden of showing by clear and convincing evidence that the
practitioner is able to defend himself or herself. If there is any
genuine issue as to one or more material facts, the hearing officer
will hold an evidentiary hearing.
(2) The hearing officer, upon receipt of the OED Director's
motion under paragraph (d)(1) of this section, may direct the
practitioner to file a response. If the hearing officer requires the
practitioner to file a response, the practitioner must present clear
and convincing evidence that the prior self-alleged disability or
addiction continues to make it impossible for the practitioner to
defend himself or herself in the underlying proceeding being held in
abeyance.
(e) Action by the hearing officer. If, in deciding
a motion under paragraph (b) or (d) of this section, the hearing
officer determines that there is good cause to believe the practitioner
is not incapacitated from defending himself or herself, or is not
incapacitated from practicing before the Office, the hearing officer
shall take such action as is deemed appropriate, including the entry of
an order directing the reactivation of the practitioner and resumption
of the disciplinary proceeding.
Secs. 11.29-11.31 [Reserved]
Sec. 11.32 Initiating a disciplinary proceeding.
If after conducting an investigation under Sec. 11.22(a) the OED
Director is of the opinion that grounds exist for discipline under Sec.
11.19(b)(3)-(5), the OED Director, and after complying where necessary
with the provisions of 5 U.S.C. 558(c), shall convene a meeting of a
panel of the Committee on Discipline. The panel of the Committee on
Discipline shall then determine as specified in Sec. 11.23(b) whether a
disciplinary proceeding shall be instituted. If the panel of the
Committee on Discipline determines that probable cause exists to bring
charges under Sec. 11.19(b)(3)-(5), the OED Director shall institute a
disciplinary proceeding by filing a complaint under Sec. 11.34.
Sec. 11.33 [Reserved]
Sec. 11.34 Complaint.
(a) A complaint instituting a disciplinary proceeding under Sec.
11.25(b)(4) or 11.32 shall:
(1) Name the practitioner who may then be referred to as the
"respondent";
(2) Give a plain and concise description of the respondent's
alleged grounds for discipline;
(3) State the place and time, not less than thirty days from
the date the complaint is filed, for filing an answer by the respondent;
(4) State that a decision by default may be entered if an
answer is not timely filed by the respondent; and
(5) Be signed by the OED Director.
(b) A complaint will be deemed sufficient if it fairly informs
the respondent of any grounds for discipline, and where applicable, the
imperative USPTO Rules of Professional Conduct that form the basis for
the disciplinary proceeding so that the respondent is able to adequately
prepare a defense.
(c) The complaint shall be filed in the manner prescribed by the USPTO
Director.
Sec. 11.35 Service of complaint.
(a) A complaint may be served on a respondent in any of the
following methods:
(1) By delivering a copy of the complaint personally to the
respondent, in which case the individual who gives the complaint to the
respondent shall file an affidavit with the OED Director indicating the
time and place the complaint was handed to the respondent.
(2) By mailing a copy of the complaint by "Express Mail,"
first-class mail, or any delivery service that provides ability to
confirm delivery or attempted delivery to:
(i) A respondent who is a registered practitioner at the address provided
to OED pursuant to Sec. 11.11, or
(ii) A respondent who is a nonregistered practitioner at the
last address for the respondent known to the OED Director.
(3) By any method mutually agreeable to the OED Director and
the respondent.
(4) In the case of a respondent who resides outside the United
States, by sending a copy of the complaint by any delivery service that
provides ability to confirm delivery or attempted delivery, to:
(i) A respondent who is a registered practitioner at the address provided
to OED pursuant to Sec. 11.11; or
(ii) A respondent who is a nonregistered practitioner at the
last address for the respondent known to the OED Director.
(b) If a copy of the complaint cannot be delivered to the
respondent through any one of the procedures in paragraph (a) of this
section, the OED Director shall serve the respondent by causing an
appropriate notice to be published in the Official Gazette for two
consecutive weeks, in which case, the time for filing an answer shall
be thirty days from the second publication of the notice. Failure to
timely file an answer will constitute an admission of the allegations
in the complaint in accordance with paragraph (d) of Sec. 11.36, and the
hearing officer may enter an initial decision on default.
(c) If the respondent is known to the OED Director to be
represented by an attorney under Sec. 11.40(a), a copy of the complaint
shall be served on the attorney in lieu of the respondent in the manner
provided for in paragraph (a) or (b) of this section.
Sec. 11.36 Answer to complaint.
(a) Time for answer. An answer to a complaint shall be filed within
the time set in the complaint but in no event shall that time be less than
thirty days from the date the complaint is filed.
(b) With whom filed. The answer shall be filed in
writing with the hearing officer at the address specified in the
complaint. The hearing officer may extend the time for filing an answer
once for a period of no more than thirty days upon a showing of good
cause, provided a motion requesting an extension of time is filed
within thirty days after the date the complaint is served on
respondent. A copy of the answer, and any exhibits or attachments
thereto, shall be served on the OED Director.
(c) Content. The respondent shall include in the
answer a statement of the facts that constitute the grounds of defense
and shall specifically admit or deny each allegation set forth in the
complaint. The respondent shall not deny a material allegation in the
complaint that the respondent knows to be true or state that respondent
is without sufficient information to form a belief as to the truth of
an allegation when in fact the respondent possesses that information.
The respondent shall also state affirmatively in the answer special
matters of defense and any intent to raise a disability as a mitigating
factor. If respondent intends to raise a special matter of defense or
disability, the answer shall specify the defense or disability, its
nexus to the misconduct, and the reason it provides a defense or
mitigation. A respondent who fails to do so cannot rely on a special
matter of defense or disability. The hearing officer may, for good
cause, allow the respondent to file the statement late, grant
additional hearing preparation time, or make other appropriate orders.
(d) Failure to deny allegations in complaint. Every
allegation in the complaint that is not denied by a respondent in the
answer shall be deemed to be admitted and may be considered proven. The
hearing officer at any hearing need receive no further evidence with
respect to that allegation.
(e) Default judgment. Failure to timely file an answer will constitute
an admission of the allegations in the complaint and may result in entry
of default judgment.
Sec. 11.37 [Reserved]
Sec. 11.38 Contested case.
Upon the filing of an answer by the respondent, a disciplinary
proceeding shall be regarded as a contested case within the meaning of
35 U.S.C. 24. Evidence obtained by a subpoena issued under 35 U.S.C. 24
shall not be admitted into the record or considered unless leave to
proceed under 35 U.S.C. 24 was previously authorized by the hearing
officer.
Sec. 11.39 Hearing officer; appointment; responsibilities; review of
interlocutory orders; stays.
(a) Appointment. A hearing officer, appointed by the USPTO Director
under 5 U.S.C. 3105 or 35 U.S.C. 32, shall conduct disciplinary proceedings
as provided by this Part.
(b) Independence of the Hearing Officer. (1) A hearing officer appointed
in accordance with paragraph (a) of this section shall not be subject to
first level or second level supervision by the USPTO Director or his or her
designee.
(2) A hearing officer appointed in accordance with paragraph (a) of this
section shall not be subject to supervision of the person(s) investigating
or prosecuting the case.
(3) A hearing officer appointed in accordance with paragraph
(a) of this section shall be impartial, shall not be an individual who
has participated in any manner in the decision to initiate the
proceedings, and shall not have been employed under the immediate
supervision of the practitioner.
(4) A hearing officer appointed in accordance with paragraph
(a) of this section shall be admitted to practice law and have suitable
experience and training to conduct the hearing, reach a determination,
and render an initial decision in an equitable manner.
(c) Responsibilities. The hearing officer shall have authority,
consistent with specific provisions of these regulations, to:
(1) Administer oaths and affirmations;
(2) Make rulings upon motions and other requests;
(3) Rule upon offers of proof, receive relevant evidence, and
examine witnesses;
(4) Authorize the taking of a deposition of a witness in lieu
of personal appearance of the witness before the hearing officer;
(5) Determine the time and place of any hearing and regulate
its course and conduct;
(6) Hold or provide for the holding of conferences to settle or
simplify the issues;
(7) Receive and consider oral or written arguments on facts or law;
(8) Adopt procedures and modify procedures for the orderly
disposition of proceedings;
(9) Make initial decisions under Secs. 11.25 and 11.54; and
(10) Perform acts and take measures as necessary to promote the
efficient, timely, and impartial conduct of any disciplinary proceeding.
(d) Time for making initial decision. The hearing
officer shall set times and exercise control over a disciplinary
proceeding such that an initial decision under Sec. 11.54 is normally
issued within nine months of the date a complaint is filed. The hearing
officer may, however, issue an initial decision more than nine months
after a complaint is filed if there exist circumstances, in his or her
opinion, that preclude issuance of an initial decision within nine
months of the filing of the complaint.
(e) Review of interlocutory orders. The USPTO Director will not review
an interlocutory order of a hearing officer except:
(1) When the hearing officer shall be of the opinion:
(i) That the interlocutory order involves a controlling
question of procedure or law as to which there is a substantial ground
for a difference of opinion, and
(ii) That an immediate decision by the USPTO Director may materially
advance the ultimate termination of the disciplinary proceeding, or
(2) In an extraordinary situation where the USPTO Director deems that
justice requires review.
(f) Stays pending review of interlocutory order. If the OED Director or
a respondent seeks review of an interlocutory order of a hearing officer
under paragraph (b)(2) of this section, any time period set for taking
action by the hearing officer shall not be stayed unless ordered by the
USPTO Director or the hearing officer.
(g) The hearing officer shall engage in no ex parte discussions with any
party on the merits of the complaint, beginning with appointment and ending
when the final agency decision is issued.
Sec. 11.40 Representative for OED Director or respondent.
(a) A respondent may represent himself or herself, or be
represented by an attorney before the Office in connection with an
investigation or disciplinary proceeding. The attorney shall file a
written declaration that he or she is an attorney within the meaning of
Sec. 11.1 and shall state:
(1) The address to which the attorney wants correspondence
related to the investigation or disciplinary proceeding sent, and
(2) A telephone number where the attorney may be reached during
normal business hours.
(b) The Deputy General Counsel for Intellectual Property and
Solicitor, and attorneys in the Office of the Solicitor shall represent
the OED Director. The attorneys representing the OED Director in
disciplinary proceedings shall not consult with the USPTO Director, the
General Counsel, or the Deputy General Counsel for General Law
regarding the proceeding. The General Counsel and the Deputy General
Counsel for General Law shall remain screened from the investigation
and prosecution of all disciplinary proceedings in order that they
shall be available as counsel to the USPTO Director in deciding
disciplinary proceedings unless access is appropriate to perform their
duties. After a final decision is entered in a disciplinary proceeding,
the OED Director and attorneys representing the OED Director shall be
available to counsel the USPTO Director, the General Counsel, and the
Deputy General Counsel for General Law in any further proceedings.
Sec. 11.41 Filing of papers.
(a) The provisions of Secs. 1.8 and 2.197 of this subchapter do
not apply to disciplinary proceedings. All papers filed after the
complaint and prior to entry of an initial decision by the hearing
officer shall be filed with the hearing officer at an address or place
designated by the hearing officer.
(b) All papers filed after entry of an initial decision by the
hearing officer shall be filed with the USPTO Director. A copy of the
paper shall be served on the OED Director. The hearing officer or the
OED Director may provide for filing papers and other matters by hand,
by "Express Mail," or by other means.
Sec. 11.42 Service of papers.
(a) All papers other than a complaint shall be served on a respondent
who is represented by an attorney by:
(1) Delivering a copy of the paper to the office of the attorney; or
(2) Mailing a copy of the paper by first-class mail, "Express
Mail," or other delivery service to the attorney at the address provided by
the attorney under Sec. 11.40(a)(1); or
(3) Any other method mutually agreeable to the attorney and a
representative for the OED Director.
(b) All papers other than a complaint shall be served on a
respondent who is not represented by an attorney by:
(1) Delivering a copy of the paper to the respondent; or
(2) Mailing a copy of the paper by first-class mail, "Express
Mail," or other delivery service to the respondent at the address to
which a complaint may be served or such other address as may be
designated in writing by the respondent; or
(3) Any other method mutually agreeable to the respondent and a
representative of the OED Director.
(c) A respondent shall serve on the representative for the OED
Director one copy of each paper filed with the hearing officer or the
OED Director. A paper may be served on the representative for the OED
Director by:
(1) Delivering a copy of the paper to the representative; or
(2) Mailing a copy of the paper by first-class mail, "Express
Mail," or other delivery service to an address designated in writing
by the representative; or
(3) Any other method mutually agreeable to the respondent and
the representative.
(d) Each paper filed in a disciplinary proceeding shall contain
therein a certificate of service indicating:
(1) The date of which service was made; and
(2) The method by which service was made.
(e) The hearing officer or the USPTO Director may require that
a paper be served by hand or by "Express Mail."
(f) Service by mail is completed when the paper mailed in the
United States is placed into the custody of the U.S. Postal Service.
Sec. 11.43 Motions.
Motions may be filed with the hearing officer. The hearing
officer will determine whether replies to responses will be authorized
and the time period for filing such a response. No motion shall be
filed with the hearing officer unless such motion is supported by a
written statement by the moving party that the moving party or attorney
for the moving party has conferred with the opposing party or attorney
for the opposing party in an effort in good faith to resolve by
agreement the issues raised by the motion and has been unable to reach
agreement. If the parties prior to a decision on the motion resolve
issues raised by a motion presented to the hearing officer, the parties
shall promptly notify the hearing officer.
Sec. 11.44 Hearings.
(a) The hearing officer shall preside at hearings in
disciplinary proceedings. If the hearing officer determines that an
oral hearing is appropriate, the hearing officer shall set the time and
place for a hearing. In setting a time and place, the hearing officer
shall normally give preference to a Federal facility in the district
where the Office's principal office is located or Washington, D.C.,
giving due regard to the convenience and needs of the parties,
witnesses, or their representatives. In cases involving an incarcerated
respondent, any necessary oral hearing may be held at the location of
incarceration. Oral hearings will be stenographically recorded and
transcribed, and the testimony of witnesses will be received under oath
or affirmation. The hearing officer shall conduct the hearing as if the
proceeding were subject to 5 U.S.C. 556. A copy of the transcript of
the hearing shall become part of the record. The OED Director and
respondent shall make their own arrangements to obtain a copy of the
transcript.
(b) If the respondent to a disciplinary proceeding fails to
appear at the hearing after a notice of hearing has been given by the
hearing officer, the hearing officer may deem the respondent to have
waived the right to a hearing and may proceed with the hearing in the
absence of the respondent.
(c) A hearing under this section will not be open to the public
except that the hearing officer may grant a request by a respondent to
open his or her hearing to the public and make the record of the
disciplinary proceeding available for public inspection,
provided, Agreement is reached in advance to exclude from
public disclosure information which is privileged or confidential under
applicable laws or regulations. If a disciplinary proceeding results in
disciplinary sanction against a practitioner, subject to Sec. 11.59(b)
the record of the entire disciplinary proceeding, including any
settlement agreement, will be available for public inspection.
Sec. 11.45 Amendment of pleadings.
The OED Director may, without Committee on Discipline
authorization, but with the authorization of the hearing officer, amend
the complaint to include additional charges based upon conduct
committed before or after the complaint was filed. If amendment of the
complaint is authorized, the hearing officer shall authorize amendment
of the answer. Any party who would otherwise be prejudiced by the
amendment will be given reasonable opportunity to meet the allegations
in the complaint or answer as amended, and the hearing officer shall
make findings on any issue presented by the complaint or answer as
amended.
Secs. 11.46-11.48 [Reserved]
Sec. 11.49 Burden of proof.
In a disciplinary proceeding, the OED Director shall have the
burden of proving his or her case by clear and convincing evidence and
a respondent shall have the burden of proving any affirmative defense
by clear and convincing evidence.
Sec. 11.50 Evidence.
(a) Rules of evidence. The rules of evidence prevailing in courts of
law and equity are not controlling in hearings in disciplinary proceedings.
However, the hearing officer shall exclude evidence that is irrelevant,
immaterial, or unduly repetitious.
(b) Depositions. Depositions of witnesses taken pursuant to Sec. 11.51
may be admitted as evidence.
(c) Government documents. Official documents, records, and papers of the
Office, including, but not limited to, all papers in the file of a
disciplinary investigation, are admissible without extrinsic evidence of
authenticity. These documents, records, and papers may be evidenced by a
copy certified as correct by an employee of the Office.
(d) Exhibits. If any document, record, or other paper is introduced in
evidence as an exhibit, the hearing officer may authorize the withdrawal of
the exhibit subject to any conditions the hearing officer deems appropriate.
(e) Objections. Objections to evidence will be in
short form, stating the grounds of objection. Objections and rulings on
objections will be a part of the record. No exception to the ruling is
necessary to preserve the rights of the parties.
Sec. 11.51 Depositions.
(a) Depositions for use at the hearing in lieu of personal
appearance of a witness before the hearing officer may be taken by
respondent or the OED Director upon a showing of good cause and with
the approval of, and under such conditions as may be deemed appropriate
by, the hearing officer. Depositions may be taken upon oral or written
questions, upon not less than ten days' written notice to the other
party, before any officer authorized to administer an oath or
affirmation in the place where the deposition is to be taken. The
parties may waive the requirement of ten days' notice and depositions
may then be taken of a witness at a time and place mutually agreed to
by the parties. When a deposition is taken upon written questions,
copies of the written questions will be served upon the other party
with the notice, and copies of any written cross-questions will be
served by hand or "Express Mail" not less than five days before the
date of the taking of the deposition unless the parties mutually agree
otherwise. A party on whose behalf a deposition is taken shall file a
copy of a transcript of the deposition signed by a court reporter with
the hearing officer and shall serve one copy upon the opposing party.
Expenses for a court reporter and preparing, serving, and filing
depositions shall be borne by the party at whose instance the
deposition is taken. Depositions may not be taken to obtain discovery,
except as provided for in paragraph (b) of this section.
(b) When the OED Director and the respondent agree in writing,
a deposition of any witness who will appear voluntarily may be taken
under such terms and conditions as may be mutually agreeable to the OED
Director and the respondent. The deposition shall not be filed with the
hearing officer and may not be admitted in evidence before the hearing
officer unless he or she orders the deposition admitted in evidence.
The admissibility of the deposition shall lie within the discretion of
the hearing officer who may reject the deposition on any reasonable
basis including the fact that demeanor is involved and that the witness
should have been called to appear personally before the hearing officer.
Sec. 11.52 Discovery.
Discovery shall not be authorized except as follows:
(a) After an answer is filed under Sec. 11.36 and when a party
establishes that discovery is reasonable and relevant, the hearing
officer, under such conditions as he or she deems appropriate, may
order an opposing party to:
(1) Answer a reasonable number of written requests for admission or
interrogatories;
(2) Produce for inspection and copying a reasonable number of
documents; and
(3) Produce for inspection a reasonable number of things other
than documents.
(b) Discovery shall not be authorized under paragraph (a) of this
section of any matter which:
(1) Will be used by another party solely for impeachment;
(2) Is not available to the party under 35 U.S.C. 122;
(3) Relates to any other disciplinary proceeding;
(4) Relates to experts except as the hearing officer may require under
paragraph (e) of this section.
(5) Is privileged; or
(6) Relates to mental impressions, conclusions, opinions, or
legal theories of any attorney or other representative of a party.
(c) The hearing officer may deny discovery requested under
paragraph (a) of this section if the discovery sought:
(1) Will unduly delay the disciplinary proceeding;
(2) Will place an undue burden on the party required to produce
the discovery sought; or
(3) Consists of information that is available:
(i) Generally to the public;
(ii) Equally to the parties; or
(iii) To the party seeking the discovery through another source.
(d) Prior to authorizing discovery under paragraph (a) of this
section, the hearing officer shall require the party seeking discovery
to file a motion (Sec. 11.43) and explain in detail, for each request
made, how the discovery sought is reasonable and relevant to an issue
actually raised in the complaint or the answer.
(e) The hearing officer may require parties to file and serve,
prior to any hearing, a pre-hearing statement that contains:
(1) A list (together with a copy) of all proposed exhibits to
be used in connection with a party's case-in-chief;
(2) A list of proposed witnesses;
(3) As to each proposed expert witness:
(i) An identification of the field in which the individual will
be qualified as an expert;
(ii) A statement as to the subject matter on which the expert
is expected to testify; and
(iii) A statement of the substance of the facts and opinions to
which the expert is expected to testify;
(4) Copies of memoranda reflecting respondent's own statements
to administrative representatives.
(f) After a witness testifies for a party, if the opposing
party requests, the party may be required to produce, prior to
cross-examination, any documents relied upon by the witness in giving
his or her testimony.
Sec. 11.53 Proposed findings and conclusions; post-hearing memorandum.
Except in cases in which the respondent has failed to answer
the complaint or amended complaint, the hearing officer, prior to
making an initial decision, shall afford the parties a reasonable
opportunity to submit proposed findings and conclusions and a
post-hearing memorandum in support of the proposed findings and
conclusions.
Sec. 11.54 Initial decision of hearing officer.
(a) The hearing officer shall make an initial decision in the
case. The decision will include:
(1) A statement of findings of fact and conclusions of law, as
well as the reasons or bases for those findings and conclusions with
appropriate references to the record, upon all the material issues of
fact, law, or discretion presented on the record, and
(2) An order of default judgment, of suspension or exclusion
from practice, of reprimand, or an order dismissing the complaint. The
hearing officer shall transmit a copy of the decision to the OED
Director and to the respondent. After issuing the decision, the hearing
officer shall transmit the entire record to the OED Director. In the
absence of an appeal to the USPTO Director, the decision of the hearing
officer, including a default judgment, will, without further
proceedings, become the decision of the USPTO Director thirty days from
the date of the decision of the hearing officer.
(b) The initial decision of the hearing officer shall explain
the reason for any default judgment, reprimand, suspension, or
exclusion. In determining any sanction, the following should normally
be considered:
(1) The public interest;
(2) The seriousness of the grounds for discipline;
(3) The deterrent effects deemed necessary;
(4) The integrity of the legal and patent professions; and
(5) Any extenuating circumstances.
Sec. 11.55 Appeal to the USPTO Director.
(a) Within thirty days after the date of the initial decision
of the hearing officer under Secs. 11.25, or 11.54, either party may
appeal to the USPTO Director. The appeal shall include the appellant's
brief. If more than one appeal is filed, the party who files the appeal
first is the appellant for purpose of this rule. If appeals are filed
on the same day, the respondent is the appellant. If an appeal is
filed, then the OED Director shall transmit the entire record to the
USPTO Director. Any cross-appeal shall be filed within fourteen days
after the date of service of the appeal pursuant to Sec. 11.42, or thirty
days after the date of the initial decision of the hearing officer,
whichever is later. The cross-appeal shall include the
cross-appellant's brief. Any appellee or cross-appellee brief must be
filed within thirty days after the date of service pursuant to Sec. 11.42
of an appeal or cross-appeal. Any reply brief must be filed within
fourteen days after the date of service of any appellee or
cross-appellee brief.
(b) An appeal or cross-appeal must include exceptions to the
decisions of the hearing officer and supporting reasons for those
exceptions. Any exception not raised will be deemed to have been waived
and will be disregarded by the USPTO Director in reviewing the initial
decision.
(c) All briefs shall:
(1) Be filed with the USPTO Director at the address set forth
in Sec. 1.1(a)(3)(ii) of this subchapter and served on the opposing party;
(2) Include separate sections containing a concise statement of
the disputed facts and disputed points of law; and
(3) Be typed on 8 1/2 by 11-inch paper, and shall comply with
Rule 32(a)(4)-(6) of the Federal Rules of Appellate Procedure.
(d) An appellant's, cross-appellant's, appellee's, and
cross-appellee's brief shall be no more than thirty pages in length,
and comply with Rule 28(a)(2), (3), and (5) through (10) of the Federal
Rules of Appellate Procedure. Any reply brief shall be no more than
fifteen pages in length, and shall comply with Rule 28(a)(2), (3), (8),
and (9) of the Federal Rules of Appellate Procedure.
(e) The USPTO Director may refuse entry of a nonconforming brief.
(f) The USPTO Director will decide the appeal on the record
made before the hearing officer.
(g) Unless the USPTO Director permits, no further briefs or
motions shall be filed.
(h) The USPTO Director may order reopening of a disciplinary
proceeding in accordance with the principles that govern the granting
of new trials. Any request to reopen a disciplinary proceeding on the
basis of newly discovered evidence must demonstrate that the newly
discovered evidence could not have been discovered by due diligence.
(i) In the absence of an appeal by the OED Director, failure by
the respondent to appeal under the provisions of this section shall be
deemed to be both acceptance by the respondent of the initial decision
and waiver by the respondent of the right to further administrative or
judicial review.
Sec. 11.56 Decision of the USPTO Director.
(a) The USPTO Director shall decide an appeal from an initial
decision of the hearing officer. The USPTO Director may affirm,
reverse, or modify the initial decision or remand the matter to the
hearing officer for such further proceedings as the USPTO Director may
deem appropriate. In making a final decision, the USPTO Director shall
review the record or the portions of the record designated by the
parties. The USPTO Director shall transmit a copy of the final decision
to the OED Director and to the respondent.
(b) A final decision of the USPTO Director may dismiss a
disciplinary proceeding, reverse or modify the initial decision,
reprimand a practitioner, or may suspend or exclude the practitioner
from practice before the Office. A final decision suspending or
excluding a practitioner shall require compliance with the provisions
of Sec. 11.58. The final decision may also condition the reinstatement of
the practitioner upon a showing that the practitioner has taken steps
to correct or mitigate the matter forming the basis of the action, or
to prevent recurrence of the same or similar conduct.
(c) The respondent or the OED Director may make a single
request for reconsideration or modification of the decision by the
USPTO Director if filed within twenty days from the date of entry of
the decision. No request for reconsideration or modification shall be
granted unless the request is based on newly discovered evidence or
error of law or fact, and the requestor must demonstrate that any newly
discovered evidence could not have been discovered any earlier by due
diligence. Such a request shall have the effect of staying the
effective date of the order of discipline in the final decision. The
decision by the USPTO Director is effective on its date of entry.
Sec. 11.57 Review of final decision of the USPTO Director.
(a) Review of the final decision by USPTO Director in a
disciplinary case may be had, subject to Sec. 11.55(d), by a petition
filed in the United States District Court for the District of Columbia
in accordance with the local rule of said court. 35 U.S.C. 32. The
Respondent must serve the USPTO Director with the petition. Respondent
must serve the petition in accordance with Rule 4 of the Federal Rules
of Civil Procedure and Sec. 104.2 of this Title.
(b) Except as provided for in Sec. 11.56(c), an order for
discipline in a final decision will not be stayed except on proof of
exceptional circumstances.
Sec. 11.58 Duties of disciplined or resigned practitioner.
(a) An excluded, suspended or resigned practitioner shall not
engage in any practice of patent, trademark and other non-patent law
before the Office. An excluded, suspended or resigned practitioner will
not be automatically reinstated at the end of his or her period of
exclusion or suspension. An excluded, suspended or resigned
practitioner must comply with the provisions of this section and Secs.
11.12 and 11.60 to be reinstated. Failure to comply with the provisions
of this section may constitute both grounds for denying reinstatement
or readmission; and cause for further action, including seeking further
exclusion, suspension, and for revocation of any pending probation.
(b) Unless otherwise ordered by the USPTO Director, any
excluded, suspended or resigned practitioner shall:
(1) Within thirty days after the date of entry of the order of
exclusion, suspension, or acceptance of resignation:
(i) File a notice of withdrawal as of the effective date of the
exclusion, suspension or acceptance of resignation in each pending
patent and trademark application, each pending reexamination and
interference proceeding, and every other matter pending in the Office,
together with a copy of the notices sent pursuant to paragraphs (b) and
(c) of this section;
(ii) Provide notice to all bars of which the practitioner is a
member and all clients the practitioner represents having immediate or
prospective business before the Office in patent, trademark and other
non-patent matters of the order of exclusion, suspension or resignation
and of the practitioner's consequent inability to act as a practitioner
after the effective date of the order; and that, if not represented by
another practitioner, the client should act promptly to substitute
another practitioner, or to seek legal advice elsewhere, calling
attention to any urgency arising from the circumstances of the case;
(iii) Provide notice to the practitioner(s) for all opposing
parties (or, to the parties in the absence of a practitioner
representing the parties) in matters pending before the Office of the
practitioner's exclusion, suspension or resignation and, that as a
consequence, the practitioner is disqualified from acting as a
practitioner regarding matters before the Office after the effective
date of the suspension, exclusion or resignation, and state in the
notice the mailing address of each client of the excluded, suspended or
resigned practitioner who is a party in the pending matter;
(iv) Deliver to all clients having immediate or prospective
business before the Office in patent, trademark or other non-patent
matters any papers or other property to which the clients are entitled,
or shall notify the clients and any co-practitioner of a suitable time
and place where the papers and other property may be obtained, calling
attention to any urgency for obtaining the papers or other property;
(v) Relinquish to the client, or other practitioner designated
by the client, all funds for practice before the Office, including any
legal fees paid in advance that have not been earned and any advanced
costs not expended;
(vi) Take any necessary and appropriate steps to remove from
any telephone, legal, or other directory any advertisement, statement,
or representation which would reasonably suggest that the practitioner
is authorized to practice patent, trademark, or other non-patent law
before the Office; and
(vii) Serve all notices required by paragraphs (b)(1)(ii) and
(b)(1)(iii) of this section by certified mail, return receipt
requested, unless mailed abroad. If mailed abroad, all notices shall be
served with a receipt to be signed and returned to the practitioner.
(2) Within forty-five days after entry of the order of
suspension, exclusion, or of acceptance of resignation, the
practitioner shall file with the OED Director an affidavit of
compliance certifying that the practitioner has fully complied with the
provisions of the order, this section, and with the imperative USPTO
Rules of Professional Conduct for withdrawal from representation.
Appended to the affidavit of compliance shall be:
(i) A copy of each form of notice, the names and addressees of
the clients, practitioners, courts, and agencies to which notices were
sent, and all return receipts or returned mail received up to the date
of the affidavit. Supplemental affidavits shall be filed covering
subsequent return receipts and returned mail. Such names and addresses
of clients shall remain confidential unless otherwise ordered by the
USPTO Director;
(ii) A schedule showing the location, title and account number
of every bank account designated as a client or trust account, deposit
account in the Office, or other fiduciary account, and of every account
in which the practitioner holds or held as of the entry date of the
order any client, trust, or fiduciary funds for practice before the
Office;
(iii) A schedule describing the practitioner's disposition of
all client and fiduciary funds for practice before the Office in the
practitioner's possession, custody or control as of the date of the
order or thereafter;
(iv) Such proof of the proper distribution of said funds and
the closing of such accounts as has been requested by the OED Director,
including copies of checks and other instruments;
(v) A list of all other State, Federal, and administrative
jurisdictions to which the practitioner is admitted to practice; and
(vi) An affidavit describing the precise nature of the steps
taken to remove from any telephone, legal, or other directory any
advertisement, statement, or representation which would reasonably
suggest that the practitioner is authorized to practice patent,
trademark, or other non-patent law before the Office. The affidavit
shall also state the residence or other address of the practitioner to
which communications may thereafter be directed, and list all State and
Federal jurisdictions, and administrative agencies to which the
practitioner is admitted to practice. The OED Director may require such
additional proof as is deemed necessary. In addition, for the period of
discipline, an excluded or suspended practitioner shall continue to
file a statement in accordance with Sec. 11.11(a), regarding any change
of residence or other address to which communications may thereafter be
directed, so that the excluded or suspended practitioner may be located
if a grievance is received regarding any conduct occurring before or
after the exclusion or suspension. The practitioner shall retain copies
of all notices sent and shall maintain complete records of the steps
taken to comply with the notice requirements.
(3) Not hold himself or herself out as authorized to practice
law before the Office.
(4) Not advertise the practitioner's availability or ability to
perform or render legal services for any person having immediate or
prospective business before the Office.
(5) Not render legal advice or services to any person having
immediate or prospective business before the Office as to that business.
(6) Promptly take steps to change any sign identifying a
practitioner's or the practitioner's firm's office and practitioner's
or the practitioner's firm's stationery to delete therefrom any
advertisement, statement, or representation which would reasonably
suggest that the practitioner is authorized to practice law before the
Office.
(c) An excluded, suspended or resigned practitioner, after
entry of the order of exclusion or suspension, or acceptance of
resignation, shall not accept any new retainer regarding immediate or
prospective business before the Office, or engage as a practitioner for
another in any new case or legal matter regarding practice before the
Office. The excluded, suspended or resigned practitioner shall be
granted limited recognition for a period of thirty days. During the
thirty-day period of limited recognition, the excluded, suspended or
resigned practitioner shall conclude work on behalf of a client on any
matters that were pending before the Office on the date of entry of the
order of exclusion or suspension, or acceptance of resignation. If such
work cannot be concluded, the excluded, suspended or resigned
practitioner shall so advise the client so that the client may make
other arrangements.
(d) Required records. An excluded, suspended or
resigned practitioner shall keep and maintain records of the various
steps taken under this section, so that in any subsequent proceeding
proof of compliance with this section and with the exclusion or
suspension order will be available. The OED Director will require the
practitioner to submit such proof as a condition precedent to the
granting of any petition for reinstatement.
(e) An excluded, suspended or resigned practitioner who aids
another practitioner in any way in the other practitioner's practice of
law before the Office, may, under the direct supervision of the other
practitioner, act as a paralegal for the other practitioner or perform
other services for the other practitioner which are normally performed
by laypersons, provided:
(1) The excluded, suspended or resigned practitioner is a
salaried employee of:
(i) The other practitioner;
(ii) The other practitioner's law firm; or
(iii) A client-employer who employs the other practitioner as a
salaried employee;
(2) The other practitioner assumes full professional
responsibility to any client and the Office for any work performed by
the excluded, suspended or resigned practitioner for the other
practitioner;
(3) The excluded, suspended or resigned practitioner does not:
(i) Communicate directly in writing, orally, or otherwise with
a client of the other practitioner in regard to any immediate or
prospective business before the Office;
(ii) Render any legal advice or any legal services to a client
of the other practitioner in regard to any immediate or prospective
business before the Office; or
(iii) Meet in person or in the presence of the other
practitioner in regard to any immediate or prospective business before
the Office, with:
(A) Any Office employee in connection with the prosecution of
any patent, trademark, or other case;
(B) Any client of the other practitioner, the other
practitioner's law firm, or the client-employer of the other
practitioner; or
(C) Any witness or potential witness whom the other
practitioner, the other practitioner's law firm, or the other
practitioner's client-employer may or intends to call as a witness in
any proceeding before the Office. The term "witness" includes
individuals who will testify orally in a proceeding before, or sign an
affidavit or any other document to be filed in, the Office.
(f) When an excluded, suspended or resigned practitioner acts
as a paralegal or performs services under paragraph (c) of this
section, the practitioner shall not thereafter be reinstated to
practice before the Office unless:
(1) The practitioner shall have filed with the OED Director an
affidavit which:
(i) Explains in detail the precise nature of all paralegal or
other services performed by the excluded, suspended or resigned
practitioner, and
(ii) Shows by clear and convincing evidence that the excluded,
suspended or resigned practitioner has complied with the provisions of
this section and all imperative USPTO Rules of Professional Conduct; and
(2) The other practitioner shall have filed with the OED Director a
written statement which:
(i) Shows that the other practitioner has read the affidavit
required by paragraph (d)(1) of this section and that the other
practitioner believes every statement in the affidavit to be true, and
(ii) States why the other practitioner believes that the
excluded, suspended or resigned practitioner has complied with
paragraph (c) of this section.
Sec. 11.59 Dissemination of disciplinary and other information.
(a) The OED Director shall inform the public of the disposition
of each matter in which public discipline has been imposed, and of any
other changes in a practitioner's registration status. Public
discipline includes exclusion, as well as exclusion on consent;
suspension; and public reprimand. Unless otherwise ordered by the USPTO
Director, the OED Director shall give notice of public discipline and
the reasons for the discipline to disciplinary enforcement agencies in
the State where the practitioner is admitted practice, to courts where
the practitioner is known to be admitted, and the public. If public
discipline is imposed, the OED Director shall cause a final decision of
the USPTO Director to be published. Final decisions of the USPTO
Director include default judgments. See Sec. 11.54(a)(2). If a private
reprimand is imposed, the OED Director shall cause a redacted version
of the final decision to be published.
(b) Records available to the public. Unless the
USPTO Director orders that the proceeding or a portion of the record be
kept confidential, the OED Director's records of every disciplinary
proceeding where a practitioner is reprimanded, suspended, or excluded,
including when said sanction is imposed by default judgment, shall be
made available to the public upon written request, except that
information may be withheld as necessary to protect the privacy of
third parties. The record of a proceeding that results in a
practitioner's transfer to disability inactive status shall not be
available to the public.
(c) Access to records of exclusion by consent. The
order excluding a practitioner on consent under Sec. 11.27 shall be
available to the public. However, the affidavit required under
paragraph (a) of Sec. 11.27 shall not be available to the public or made
available for use in any other proceeding except by order of the USPTO
Director or upon written consent of the practitioner.
Sec. 11.60 Petition for reinstatement.
(a) Restrictions on reinstatement. An excluded,
suspended or resigned practitioner shall not resume practice of patent,
trademark, or other non-patent law before the Office until reinstated
by order of the OED Director or the USPTO Director.
(b) Petition for reinstatement. An excluded or
suspended practitioner shall be eligible to apply for reinstatement
only upon expiration of the period of suspension or exclusion and the
practitioner's full compliance with Sec. 11.58. An excluded practitioner
shall be eligible to apply for reinstatement no earlier than at least
five years from the effective date of the exclusion. A resigned
practitioner shall be eligible to petition for reinstatement and must
show compliance with Sec. 11.58 no earlier than at least five years from
the date the practitioner's resignation is accepted and an order is
entered excluding the practitioner on consent.
(c) Review of reinstatement petition. An excluded,
suspended or resigned practitioner shall file a petition for
reinstatement accompanied by the fee required by Sec. 1.21(a)(10) of this
subchapter. The petition for reinstatement shall be filed with the OED
Director. An excluded or suspended practitioner who has violated any
provision of Sec. 11.58 shall not be eligible for reinstatement until a
continuous period of the time in compliance with Sec. 11.58 that is equal
to the period of suspension or exclusion has elapsed. A resigned
practitioner shall not be eligible for reinstatement until compliance
with Sec. 11.58 is shown. If the excluded, suspended or resigned
practitioner is not eligible for reinstatement, or if the OED Director
determines that the petition is insufficient or defective on its face,
the OED Director may dismiss the petition. Otherwise the OED Director
shall consider the petition for reinstatement. The excluded, suspended
or resigned practitioner seeking reinstatement shall have the burden of
proof by clear and convincing evidence. Such proof shall be included in
or accompany the petition, and shall establish:
(1) That the excluded, suspended or resigned practitioner has
the good moral character and reputation, competency, and learning in
law required under Sec. 11.7 for admission;
(2) That the resumption of practice before the Office will not
be detrimental to the administration of justice or subversive to the
public interest; and
(3) That the suspended practitioner has complied with the
provisions of Sec. 11.58 for the full period of suspension, that the
excluded practitioner has complied with the provisions of Sec. 11.58 for
at least five continuous years, or that the resigned practitioner has
complied with Sec. 11.58 upon acceptance of the resignation.
(d) Petitions for reinstatement - Action by the OED
Director granting reinstatement. (1) If the excluded, suspended
or resigned practitioner is found to have complied with paragraphs
(c)(1) through (c)(3) of this section, the OED Director shall enter an
order of reinstatement, which shall be conditioned on payment of the
costs of the disciplinary proceeding to the extent set forth in
paragraphs (2) and (3) below.
(2) Payment of costs of disciplinary proceedings.
Prior to reinstatement to practice, the excluded or suspended
practitioner shall pay the costs of the disciplinary proceeding. The
costs imposed pursuant to this section include all of the following:
(i) The actual expense incurred by the OED Director or the
Office for the original and copies of any reporter's transcripts of the
disciplinary proceeding, and any fee paid for the services of the
reporter;
(ii) All expenses paid by the OED Director or the Office which
would qualify as taxable costs recoverable in civil proceedings; and
(iii) The charges determined by the OED Director to be
"reasonable costs" of investigation, hearing, and review. These
amounts shall serve to defray the costs, other than fees for services
of attorneys and experts, of the Office of Enrollment and Discipline in
the preparation or hearing of the disciplinary proceeding, and costs
incurred in the administrative processing of the disciplinary
proceeding.
(3) An excluded or suspended practitioner may be granted
relief, in whole or in part, only from an order assessing costs under
this section or may be granted an extension of time to pay these costs,
in the discretion of the OED Director, upon grounds of hardship,
special circumstances, or other good cause.
(e) Petitions for reinstatement - Action by the OED
Director denying reinstatement. If the excluded, suspended or
resigned practitioner is found unfit to resume the practice of patent
law before the Office, the OED Director shall first provide the
excluded, suspended or resigned practitioner with an opportunity to
show cause in writing why the petition should not be denied. Failure to
comply with Sec. 11.12(c) shall constitute unfitness. If unpersuaded by
the showing, the OED Director shall deny the petition. The OED Director
may require the excluded, suspended or resigned practitioner, in
meeting the requirements of Sec. 11.7, to take and pass an examination
under Sec. 11.7(b), ethics courses, and/or the Multistate Professional
Responsibility Examination. The OED Director shall provide findings,
together with the record. The findings shall include on the first page,
immediately beneath the caption of the case, a separate section
entitled "Prior Proceedings" which shall state the docket number of
the original disciplinary proceeding in which the exclusion or
suspension was ordered.
(f) Resubmission of petitions for reinstatement. If
a petition for reinstatement is denied, no further petition for
reinstatement may be filed until the expiration of at least one year
following the denial unless the order of denial provides otherwise.
(g) Reinstatement proceedings open to public.
Proceedings on any petition for reinstatement shall be open to the
public. Before reinstating any excluded or suspended practitioner, the
OED Director shall publish in the Official Gazette a notice of the
excluded or suspended practitioner's petition for reinstatement and
shall permit the public a reasonable opportunity to comment or submit
evidence with respect to the petition for reinstatement.
Sec. 11.61 Savings clause.
(a) A disciplinary proceeding based on conduct engaged in prior
to the effective date of these regulations may be instituted subsequent
to such effective date, if such conduct would continue to justify
suspension or exclusion under the provisions of this part.
(b) No practitioner shall be subject to a disciplinary
proceeding under this part based on conduct engaged in before the
effective date hereof if such conduct would not have been subject to
disciplinary action before such effective date.
(c) Sections 11.24, 11.25, 11.28 and 11.34 through 11.57 shall
apply to all proceedings in which the complaint is filed on or after
the effective date of these regulations. Section 11.26 and 11.27 shall
apply to matters pending on or after the effective date of these
regulations.
(d) Sections 11.58 through 11.60 shall apply to all cases in
which an order of suspension or exclusion is entered or resignation is
accepted on or after the effective date of these regulations.
Secs. 11.62-11.99 [Reserved]
February 5, 2007 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office